UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


TEXT-BOOK        L 


THE  PATENT  LAWS 


OF 


THE  UNITED  STATES  OF  AMERICA. 


BY 

ALBERT    H.    WALKER, 

In 
OF  THE  HARTFORD  BAR. 


THIRD    EDITION. 


NEW  YORK: 
BAKER,  VOORHIS  AND   COMPANY. 

1895. 


T 
*)}$ 

18  ?5 


COPYRIGHT,  1883,  1889  and  1895. 


ALBERT   H.    WALKER. 


J 


5 

f 


PREFACE  TO  THE  THIRD  EDITION. 


The  Supreme  Court  of  the  United  States  has  lately 
decided  the  last  of  the  patent  cases,  which  were  taken  to 
that  tribunal  before  the  judiciary  act  of  1891  put  a  practical 
period  to  nearly  the  whole  of  its  patent  law  jurisdiction. 
At  this  distinguished  stage  of  legal  evolution,  the  existing 
patent  statutes,  together  with  the  thousands  of  patent 
decisions  which  have  been  made  by  the-  Supreme  Court,  and 
by  the  lower  Federal  courts  under  its  guidance,  contain 
materials  for  a  nearly  complete  and  a  beautifully  symmet- 
rical science  of  the  subject.  To  the  study  of  the  laws  thus 
embodied  and  developed,  I  have  devoted  enthusiastic 
efforts  for  twenty  years ;  and  during  the  last  eighteen  of 
those  years,  I  have  practiced  in  those  laws,  in  fifteen  of  the 
United  States.  This  edition  of  my  book  is  a  result  of  that 
experience,  and  of  my  careful  revision  and  enlargement  of 
the  second  edition,  into  accurate  conformity  with  the  present 
law.  The  differences  between  this  edition  and  the  second, 
are  far  more  numerous  and  important  than  those  between 
the  second  and  the  first.  No  book  so  old  as  the  second 
edition,  nor  even  one  a  year  younger,  can  be  a  reliable 
guide  through  the  patent  laws  of  to-day ;  but  it  is  not  prob- 
able that  any  development  of  those  laws  during  any  six 
years  of  the  future,  until  Congress  enacts  a  new  system 
of  patent  statutes,  will  be  nearly  so  extensive  or  important, 


PREFACE   TO   THE   THIRD    EDITION. 

as  that  of  the  six  years  which  have  passed  since  1889. 
Except  in  the  event  of  such  an  enactment,  a  necessity 
for  another  edition  of  this  book,  cannot  now  be  foreseen ; 
and  therefore  I  present  this  edition  to  the  bench  and  to 
the  bar,  as  probably  my  final  contribution  to  the  litera- 
ture of  the  patent  law, 

A.  H.  W. 
HARTFORD,  CONNECTICUT, 

November  16,  1895. 


PREFACE  TO  THE  SECOND  EDITION. 


THE  patent  laws  of  the  United  States,  as  those  laws  ex- 
ist at  this  beginning  of  the  second  century  of  the  national 
government,  are  stated  and  explained  in  this  edition  of  this 
book.  The  differences  between  it  and  the  first  edition,  con- 
sist in  omitting  eleven  whole  sections  which  have  become 
obsolete  since  1883,  together  with  parts  of  many  other  sec- 
tions for  the  same  reason  ;  and  in  inserting  three  new  sec- 
tions, and  many  new  points  in  many  other  sections,  which 
have  been  enacted  in  the  statutes  or  developed  in  the  de- 
cisions since  that  year ;  and  in  so  changing  or  qualifying 
the  statements  of  law  in  many  other  places  as  to  make 
them  conform  to  those  relevant  and  often  radical  decisions 
of  the  courts  which  have  been  rendered  since  the  first 
edition  of  the  book  was  published.  The  work  of  making 
these  changes  began  as  soon  after  the  publication  of  the 
first  edition  as  new  decisions  were  published,  and  has  con- 
tinued from  that  time  to  this,  and  has  involved  my  careful 
study  and  analysis  of  the  more  than  six  hundred  new 
decisions  which  are  incorporated  with  the  more  than  twelve 
hundred  old  ones  in  the  table  of  cited  cases.  The  generous 
judgment  which  has  been  passed  upon  the  first  edition  of 
the  work,  has  been  made  known  through  numerous  cita- 
tions of  the  book  in  the  decisions  of  the  courts,  and  through 
numerous  letters  received  by  me  from  mv  professional 


PKEFACE   TO   THE    SECOND    EDITION. 

brethren.  Sincere  thanks  for  the  exceeding  generosity  of 
that  judgment  are  now  returned;  and  I  am  thereby  encour- 
aged to  propose  a  third  edition  of  the  book  in  1895,  and  a 
fourth  edition  at  the  beginning  of  the  twentieth  century. 

A.  H.  W. 

HABTFOED,  CONNECTICUT, 
April  30,  1889. 


PREFACE  TO  THE  FIKST  EDITION. 


THE  Constitution  and  the  statutes  of  the  United  States, 
together  with  twelve  hundred  and  forty-six  Federal  and 
State  judicial  decisions,  are  the  principal  sources  from 
which  the  materials  for  this  text-book  were  drawn.  The 
most  extensive  treatise  heretofore  published  on  the  same 
subject,  was  published  in  1873  ;  but  it  cited  only  two  hun- 
dred and  eighty  American  cases,  together  with  one  hundred 
and  sixty-one  English  adjudications.  The  inadequacy,  to 
the  needs  of  the  profession,  of  a  treatise  so  limited  in  scope, 
was  clearly  impressed  upon  me  when  I  entered,  in  1877, 
upon  a  somewhat  extended  practice  in  patent  litigation. 
During  the  next  four  years,  I  was  called  upon  to  argue 
several  patent  cases  in  the  Supreme  Court,  and  many  others 
in  many  of  the  Circuit  Courts  of  the  United  States ;  and  in 
preparing  those  arguments,  I  was  forced  to  make  many 
laborious  researches,  from  which  a  complete  text-book 
would  have  largely  relieved  me.  Under  these  circum- 
stances, I  resolved,  early  in  1881,  to  undertake  the  produc- 
tion of  a  treatise  so  much  needed  by  the  profession.  I  be- 
gan writing  on  the  first  day  of  May  of  that  year,  and  soon 
became  so  much  interested  in  the  work,  that  I  largely  sus- 
pended my  active  practice  of  the  law,  in  order  to  give  the 
book  the  freshest  of  my  efforts,  and  thus  the  greatest  de- 
gree of  merit  consistent  with  my  abilities.  The  resulting 


PREFACE   TO   THE    FIRST    EDITION. 

treatise  covers  the  entire  field  of  the  patent  laws  of  the 
United  Spates,  as  those  laws  were  enacted  in  the  statutes 
and  developed  in  the  decisions,  from  the  foundation  of  the 
national  government  in  1789,  down  to  the  first  day  of 
September,  1883.  How  accurately  and  well  it  covers  that 
field,  is  a  question  which  belongs  to  the  bar  and  to  the 
bench ;  and  to  the  generous  judgment  of  the  bench  and 
of  the  bar,  I  commit  the  result  of  my  long  and  interesting 
labor. 

A.  H.  W. 

HARTFORD,  CONNECTICUT, 
September  26,  1883. 


TABLE  OF  CONTENTS 


CHAPTER    I. 


THE   SUBJECTS  OF  PATENTS. 

1.  Constitutional    and    statutory 
foundation  of  the  patent  laws. 

2.  Patent  law  meaning  of  the  word 
"discovery." 

3.  Patent  law  meaning  of  the  word 
"art." 

3a.  Mechanical  processes. 

7.  Difference  between  a  "  process  " 
and  a  "principle"  inquired  into. 

8.  Illustrated  by  the  case  of  Mc- 
Clurg  v.  Kingsland. 

9.  Illustrated     by    the    case    of 
O'Reilly  •».  Morse. 

10.  Illustrated  by  the  case  of  Mowry 
v.  Whitney. 

11.  Illustrated  by  the  case  of  Tilgh- 
man  v.  Proctor. 

lla.  Illustrated  by  the  Telephone 
Cases. 


1-17 


12.  Illustrated    by  the  five    cases 
when  compared. 

13.  Illustrated    by  the  five    cases 
when  contrasted. 

14.  Deduced  from  the  five  cases  as 
compared  and  contrasted. 

15.  Illustrated  by  the  eighth  claim 
of  Morse. 

16.  Machines,  and  improvements  of 
machines. 

17.  Manufactures. 

18.  Compositions  of  matter. 

19.  Distinction  between  machines, 
manufactures,    and     composi- 
tions of  matter. 

20.  Designs. 

21.  On  whose  invention  designs  are 
patentable. 

22.  Utility  and  beauty  of  designs. 


CHAPTER   II. 

INVENTION Pages  18-51 


23.  Invention  necessary  to  patent- 
ability. 

24.  Many  negative    rules,  but    no 
affirmative  rule,  for  determin- 


ing the  presence  or  absence  of 
invention. 

25.  Mere  mechanical   skill   is  not 
invention. 


CONTENTS. 


26.  Circumstances    indicating  dif- 
ference between  invention  and 
mechanical  skill. 

27.  Excellence  of  workmanship  is 
not  invention. 

28.  Substitution  of  materials  is  not 
invention. 

29.  Exception  to  the  last  rule. 

30.  Enlargement  is  not  invention. 

31.  Change  of  degree  is  not  inven- 
tion. 

31a.Exception  to  the  last  rule. 

32.  Aggregation  is  not  invention. 

33.  Simultaneousness  of  action  is 
not  necessary  to  invention. 

34.  Duplication  is  not  invention. 

35.  Omission     is     not     generally 
invention. 

36.  Substitution  of  equivalents  is 
not  invention. 

37.  New  combination  without  new 
mode  of  operation  is  not  inven- 
tion. 

38.  Using  old  thing  for  new  pur- 
pose is  not  invention. 


39.  Cases  to  which  the  last  rule 
does  not  apply. 

40.  Doubts  relevant  to  invention, 
when  otherwise  insoluble,  are 
solved  by  ascertaining  compar- 
ative utility. 

41.  Form. 

41<z.  Proportion. 

42.  Questions    of     invention    are 
questions  of  fact. 

43.  Questions  of   invention  some- 
times investigated  in  the  light 
of  the  state  of  the  art. 

44.  Joint  and  sole  inventions. 

45.  How  made. 

46.  How  distinguished. 

47.  Suggestions  to  an  inventor. 

48.  Information     sought      by    an 
inventor. 

49.  Mechanical  skill  not  necessary 
to  invention. 

50.  Sole  patent  to  one  joint  invent- 
or is  void. 

51.  Joint  patent  to  sole  inventor 
and  another  is  void. 


CHAPTEE   III. 


NOVELTY Pages  52-70 


52.  Novelty  necessary  to    patent- 
ability. 

53.  Novelty  defined. 

54.  Not  negatived  by  knowledge  or 
use  in  a  foreign  country. 

55.  Not  negatived  by  private  patent 
granted  in  a  foreign  country. 

56.  Prior  printed  publications. 

57.  Fulness  of  prior  patents  and 
printed  publications. 

58.  Novelty  not  negatived  by  any 
abandoned  application. 

59.  Qualification  of  the  last  rule. 

60.  Successful  prior  applications. 


61.  Novelty  not  negatived  by  any 
unpublished  drawing,  or  prior 
model. 

62.  Novelty  not  negatived  by  any- 
thing substantially  different. 

63.  Abandoned  experiments. 

64.  Novelty  in  cases  of  designs. 

65.  Novelty  not  negatived  by  any- 
thing    apparently    similar     or 
chemically  identical,  but  prac- 
tically useless. 

66.  Novelty     not     negatived      by 
antiquity  of  parts. 


CONTENTS. 


XI 


67.  Novelty  not  negatived  by  prior 
accidental  and  not  understood 
production. 

68.  Novelty  not  negatived  by  any- 
thing   neither    designed,     nor 
apparently  adapted,  nor  actu- 
ally used  for  the  same  purpose 
as  the  invention. 

69.  Comparative  dates. 

70.  Dates  of  patented  inventions. 

71.  Novelty  is  negatived    by  one 
instance    of    prior    knowledge 


and  use  in  this  country. 

72.  Novelty  is  negatived  by  prior 
making  without  using. 

73.  Inventor's  lack  of  knowledge 
of  anticipating  matter  is  imma- 
terial. 

74.  Old    thing  derived    from  new 
source. 

75.  Questions  of  novelty  are  ques- 
tions of  fact. 

76.  Burden  of    proof    relevant    to 
novelty. 


CHAPTEE  IV. 

UTILITY Pages  71-76 

77.  Utility  necessary  to  patentabil-      82.  Functions    which     sometimes 
ity.  work  evil  and  sometimes  work 

78.  Utility  is  negatived  by  lack  of  good. 

function.  ;  83.  Functions  thought  by  some  to 

79.  Perfection    not    necessary  to  I  be  good  and  by  others   to  be 
utility.  bad. 

80.  Beauty  has  utility,  i  84.  Good  functions  in  wrong  places. 

81.  Utility  is  negatived  where  func-     85.  Doubts  relative  to  utility  to  be 
tion  is  evil.  solved  against  infringers. 


CHAPTEK  V. 


ABANDONMENT Pages  77-92 


86.  The  several  sorts  of  abandon- 
ment. 

87.  Abandonment  of  inventions. 

88.  Actual  abandonment  of  inven- 
tions. 

89.  Actual  abandonment  by  express 
declaration 

90.  Actual  abandonment  by  formal 
disclaimer. 

91.  Actual  abandonment  resulting 
from  Jaches  before  application. 

92.  Actual  abandonment  resulting 


from  laches  after  application 
and  before  issue  of  letters  pat- 
ent. 

93.  Constructive  abandonment  be- 
fore application. 

94.  ''  Public     use,"    defined    and 
delineated. 

95.  Experimental  use. 

96.  "  On    sale,''    delineated    and 
defined. 

97.  Sale  of    inchoate    right  to  a 
patent. 


Xll 


CONTENTS. 


98.  Degree  of  identity  necessarily 
involved    between   the    thing 
constructively  abandoned  and 
the  thing  patented. 

99.  Making,  works  no  constructive 
abandonment. 

100.  Public    knowledge,    works  no 
constructive  abandonment. 

101.  Public  use  or  sale  in  a  foreign 
country. 

108.  Constructive  abandonment  af- 


ter applieation]and  before  issue 
of  letters  patent. 

104.  Rules  of  constructive  abandon- 
ment are  inflexible. 

105.  Surrender  of  letters  patent. 

106.  Abandonment      of      invention 
after  letters  patent,  unknown 
to  the  law. 

107.  Acquiescence  in  unlicensed  use 
of  patented  invention. 

108.  Questions  of  abandonment  are 
questions  of  fact. 


CHAPTER   VI. 


APPLICATIONS Pages  93-127 


109.  Constituents  of    applications 
for  patents. 

110.  The  petition. 

111.  Constituents  of  specifications. 

112.  The  preamble. 

113.  The  general  statement  of  the 
invention. 

114.  The  description  of  the  draw- 
ings. 

115.  The  detailed   description    of 
the  invention. 

116.  The  claim  or  claims. 

117.  Claims  in  machine  patents. 
117a.  Methods  of  specifying  parts 

in  claims. 

118.  Claims  in  patents  for  manu- 

factures. 

119.  Claims  in  patents  for  compo- 
sitions of  matters. 

120.  Claims  in  process  patents. 
120«.  Claims  in  design  patents. 

121.  The  signatures. 

122    The  form  of  the  oath. 

123.  The  constituents  of  the  oath. 

124.  Affirmations. 

125.'  The  Patent  Office  fees. 

126.  Drawings. 

127.  Models. 


128.  Specimens  of  compositions  of 
matter. 

129.  Dates  of  applications. 

130.  The  examination  by  the  Pat- 
ent Office. 

131.  Notification  of  rejection. 

132.  Appeals. 

133.  Appeals  to  the  Court  of  Ap- 
peals of  the  District  of  Colum- 
bia. 

134.  Bills  in  equity  to  compel  the 
Commissioner  to   grant   pat- 
ents. 

135.  Amendment    of  applications. 

136.  The  foundation  of  the  right 
of  amendment. 

137.  When      an      applicant     may 
amend. 

138.  How  an  applicant  may  amend. 

139.  When      an     applicant    must 
amend. 

140.  Interferences. 

141.  Number  of  interferences. 

142.  Decision    on     interference  is 
not  conclusive. 

143.  Caveats. 

144.  Appeals  from  decrees  on  bills 
in  equity. 


CONTENTS. 


Xlll 


145.  Abandonment  of  applications. 

146.  Constructive  abandonment  of 
applications. 

147.  Constructive  abandonment  of 
application  working  construc- 


tive abandonment  of    inven- 
tion. 

148.  Effect  of  Commissioner's  de- 
cision on  questions  relevant  to 
applications. 


CHAPTEK  VII. 


LETTERS  PATENT Pages  128-174 


149.  No  exclusive  right  to  inven- 
tions at  common  law. 

150.  Constitutional  exclusive  right 
to  inventions  in  the  United 
States. 

151.  Patents  are  property. 

152.  Dignity   of  property  in    pat- 
ents. 

153.  Patents  are  not  odious  monop- 
olies. 

154.  Patent  rights  are  absolute,  not 
qualified. 

155.  Patent  rights  are  beyond  State 
interference. 

156.  Patent  rights  are  not  subject 
to  common    law    executions, 
but  may  be  subjected  to  cred- 
itors' bills  in  equity. 

157.  Patent  rights  are  as  exclusive 
of  the  government,  as  they  are 
of  any  citizen. 

158.  Patents  do  not  cover  speci. 
mens  purchased  of  the  inven- 
tor, or  made  with  his  knowl- 
edge and  consent.before  appli- 
tion  therefor. 

159.  The  foregoing   rule    has    no 
application  to  patents  for  pro- 
cesses, 

160.  Territorial    scope  of    United 
States  patents. 

161.  Operation  of    United    States 
patents  on  the  decks  of  ships. 

162.  Duration  of  patents. 

163.  Duration  of  United  States  pat- 
ents for  inventions  first  pat- 


ented in  a  foreign  country, 
according  to  the  statute  of 
18TO. 

164.  Duration  of  United  States  pat- 
ents for  inventions   first  pat- 
ented   in    a  foreign  country, 
according   to    the   statute  of 
1839. 

165.  Duration    of    United    States 
patents    for     inventions   first 
patented  in  a  foreign  country, 
according    to    the  statute  of 
1861. 

170.  Beginning    of    the  terms    of 
United  States  patents. 

171.  To  whom  letters  patent  are 
granted  by  the  government. 

172.  Letters  patent  as  documents. 

173.  The  specification. 

174.  The  description. 

175.  The  description. 

176.  The  claim  or  claims. 

177.  The  claim  or  claims 

178.  Particularity  in    descriptions 
and  claims,  are  conditions  pre- 
cedent to  validity. 

179.  Questions  of  sufficiency  of  par- 
ticularly of    descriptions  and 
claims,  are  questions  of  fact, 
and  not  of  law. 

180.  Plurality  of   inventions  in  a 
single  letters  patent. 

180a.  Plurality  of  letters  patent  for 
different  parts  or  combinations 
in  a  machine  or  apparatus. 

181.  Construction  of  letters  patent. 


XIV 


CONTENTS. 


182.  Claims  to  be  construed  in  the 
light  of  descriptions. 

182a.  Construction  of  claims  which 
employ  reference  letters  or 
numerals. 

183.  Construction    of      functional 
claims. 

184.  Claims  construed  in  the  light 
of  the  state  of  the  art. 

185.  Proper  liberality  of  construc- 
tion. 

186.  Proper  strictness  of  construc- 
tion. 

187.  Construction  in  the   light  of 


contemporaneous  understand- 
ing of  the  inventor. 
187a.  Patent  Office  limitations. 

188.  Construction  in  the    light  of 
contemporaneous  statutes. 

189.  Questions  of  construction  are 
questions  of  law,  and  not  of 
fact. 

190.  Letters  patent  presumed  to  be 
for  same    invention    as    the 
application  therefor. 

191.  Letters  patent  are  construct- 
ive notice  of  their  contents  to 
every  person. 


CHAPTEK   VIII. 


DISCLAIMERS Pages  175-188 


192.  Statutory  authorization  of  dis- 
claimers. 

193.  Statutory  prescriptions,   rele- 
vant to  disclaimers. 

194.  Errors  which  justify  disclaim, 
ers. 

195.  Mistakes  of  fact,  relevant  to 
novelty. 

196.  Mistakes  of    law,  relevant  to 
invention. 

197.  Claims  void  for  want  of  utility. 

198.  Combination  claims. 

199.  Compound  claims. 

200.  Immaterial  claims. 

201.  Reissue  claims. 


202.  Fraudulent  or  deceptive  inten- 
tion. 

203.  Effect  of   unreasonable    delay 
to  file  a  disclaimer. 

204.  Beginning  of  unreasonable  de- 
lay to  file  a  disclaimer. 

205.  Costs,  where  a  necessary  dis- 
"claimer  has  not  been  filed. 

206.  Extent  of  disclaimant's  inter- 
est. 

207.  Construction  of  letters  patent 
after  a  disclaimer. 

208.  Disclaimers  filed  pending  liti- 
gation. 

209.  Disclaimers  demanded  by  judi- 
cial decisions. 


CHAPTER   IX. 

REISSUES : Pages  189-215 


210.  Beginning  of    the  history  of 
reissues. 

211.  First  statute  providing  for  re- 
issues, 1832. 


212.  Reissues  under  the  Patent  Act 
of  1836. 

213.  Amendments  made  in  the  re- 
issue law  by  the  Patent  Act  of 
1837. 


CONTENTS. 


XV 


214.  Reissues  under  the  Patent  Act 
of  1870. 

215.  Reissues  under   the    Revised 
Statutes. 

216.  Subjects  of  reissues. 
216a.  Narrowed  reissues. 

217.  The    words     "  specification," 
"defective, "and  "insufficient" 
defined. 

218.  Faults  which  justify  reissues. 
218a.  Reissues  correcting    patents 

without  changing  their  scopes. 

219.  Broadened  reissues. 

220.  Inadvertence,     accident,    and 
mistake. 

221.  Question  of  the  conclusiveness 
of  the  Commissioner's  decis- 
ion relevant  to  existence  of  re- 
issuable  faults,  and  relevant  to 
the  existence  of  inadvertence, 
accident,  or  mistake. 

226.  The  doctrine  of  the  case  of 
Miller  «.  Brass  Co. 

227.  The  length  of  the  delay  con- 
templated by  the  doctrine  of 
Miller  v.  Brass  Co. 

229.  The  statute  relevant    to  two 
years'  prior  use  or  sale  has  no 
application  to  reissues  as  such. 

230.  Surrender  of  patent. 

231.  Effect  of  surrender  with,  and 
also  without,  reissue. 

232.  Reissues  of  reissued  patents 


and  of  extended  patents,  but 
not  of    expired    patents,   are 
proper. 
233.  Same  invention. 

239.  "Where  there  is  neither  model 
nor  drawing." 

240.  New  matter. 

242.  Reissues  must  be  for  same  in- 
vention as  prior  reissues,  and 
also    for    same    invention    as 
originals. 

243.  Legal  presumption    of  same- 
ness of  invention. 

244.  Omission,  as  it  affects  same- 
ness of  invention. 

245.  Reissues  for  sub-combinations. 

246.  Reissues  for  single  devices. 

247.  Reissues  as  affected  by  sub- 
stitution of  equivalents. 

248.  Reissues  entitled  to  a  liberal 
construction. 

249.  Reissued  patents  may  be  valid 
as  to  some  claims  while  void 
as  to  others. 

250.  Executors,  administrators.and 
assigns  may  procure  reissues. 

251.  One  of  several  executors  may 
procure  a  reissue. 

252.  Rights  of  assignees  in  reissues. 

253.  The  rights  of  grantees  in  re- 
issues. 

254.  The  legal  effect  of    reissued 
patents. 


CHAPTER   X. 


EXTENSIONS Pages  216-227 


255.  Constitutional    foundation    of 
extensions. 

256.  Congressional  extensions. 

257.  Mode  of  Congressional  exten- 
sion. 

258.  Effect  of  Congressional  exten- 
sions. 

259.  Patent  Office  extensions. 


260.  Statutory  foundation  of  Patent 
Office  extensions. 

261.  Who  might  apply  for  Patent 
Office  extensions. 

262.  Points  of  time  whereon  Patent 
Office  extensions  were  grant- 
able. 


XVI 


CONTENTS. 


263.  Patent  Office  extension  might 
be  granted  to  an  inventor  pat- 
entee, even  if  he  had  parted 
with  all  interest  in  the  first 
term  of  his  patent. 

264.  Patent  Office  extensions  grant- 
able     only    where     inventors 
would  possess,  or  at  least  par- 
ticipate in,  the  benefit  thereof. 

265.  Patent  Office  extensions,  how 
effectuated. 

266.  Force  of   the  Commissioner's 
decision  in  extension  cases. 


267.  Facts  which  justify  extensions. 

268.  Proceedings     preliminary    to 
extensions.    ' 

269.  Remedy  for  fraud  in  procuring 
or  in  granting  extensions. 

270.  "  The  benefit  of  the  extension 
of  a  patent  shall  extend  to  the 
assignees  and  grantees  of  the 
right  to  use  the  thing  patented, 
to  the  extent  of  their  interest 
therein." 

271.  Adjudged  meaning  of  the  stat- 
ute quoted  in  the  last  section. 


CHAPTEE   XI. 

TITLE Pages  228-249 


272.  The  nature  of  titles,  and  the 
methods  of  their  acquisition. 

273.  Title  by  occupancy. 

274.  Title  by  assignment. 

275.  Characteristics,       authentica- 
tion, and  effect  of  assignments. 

276.  Dormant  assignments. 

277.  Assignments  of  rights  of  ac- 
tion for  past  infringements. 

278.  Construction  of  assignments. 

279.  Reformation  of  assignments. 

280.  Assignments  of  extensions. 

281.  Recording  and  notice. 

282.  Warranty  of  title. 

283.  No  implied  warranty  of  valid- 
ity. 


284.  Express  warranties  of  validity. 

285.  Equitable  titles;  how  created. 

286.  Equitable  titles;  how  treated. 

287.  Title  by  grant. 

288.  Extra-territorial    rights    con- 
veyed by  grants. 

288a.  Mortgages  of  patents. 

289.  Title  by  creditor's  bill. 

290.  Title  by  bankruptcy. 

291.  Title  by  death. 

292.  Tenancy  in   common.     Joint- 
tenancy 

294.  Rights  of  tenants  in  common 
as  against  each  other. 

295.  Partition. 


CHAPTEE  XII. 


LICENSES Pages  250-266 


296.  Licenses  defined  and  described. 

297.  Express  licenses  to  make,  with 
implied  leave  to  use,  or  implied 
leave  to  sell  the  things  made. 

298.  Express  licenses  to  use,  with 
implied  leave  to  make  for  use. 


299.  Express  licenses  to  sell,  with 
implied  leave  to  the  vendees 
to  use  and  to  sell  the  things 
they  purchase. 

300.  Licenses    to   make  and    use, 
without  implied  leave  to  sell. 


CONTENTS. 


XV11 


301.  Licenses  to  make  and  sell,  or 
to  use  and  sell,  with  implied 
leave  to  the  vendees  to   use 
and  to  sell  the  articles  they 
buy. 

302.  Express  licenses  so  restricted 
as  not  to  convey  implied  rights. 

303.  Written  and  oral  licenses. 

304.  Recording  and  notice. 

305.  Licenses  given  by  one  of  sev- 
eral owners  in  common,  and 
licenses  given  to  one  of  sev- 
eral joint  users. 


306.  Construction  of  licenses. 

307.  Warranty  and  eviction. 

308.  Clauses  of  forfeiture. 

309.  Effects  of  forfeiture. 

310.  Assignability  of  licenses. 

311.  Purely  implied  licenses. 

312.  Implied  licenses  from  conduct, 
and  first  by  acquiescence. 

313.  Implied  license  from  conduct 
by  estoppel. 

314.  Implied    license   from  actual 
recovery  of  a  full  license  fee. 


CHAPTEE  XIII. 


INTERFERING   PATENTS Pages  267-273 


315.  Causes  and  characteristics  of 
interfering  patents. 

316.  Actions    in    equity    between 
interfering  patents. 

317.  The    proper    issues    in    puch 
actions. 

318.  The  force  of  the  decision  of 


the  Commissioner  of  Patents 
on  a  prior  interference  in  the 
Patent  Office. 

319.  Injunctions     in     interference 
actions. 

320.  The    proper  decrees  in  such 
actions. 


CHAPTEE   XIV. 

REPEAL  OP  PATENTS Pages  274-275 

321.  Patents  obtained  by  fraud,  or  ;  patents    so    obtained    or    so 
granted  by  mistake.                                granted. 

322.  Jurisdiction  of  equity  to  repeal      323.  Practice  in  such  cases. 


CHAPTEE  XV. 

QUI  TAM  ACTIONS Pages  276-282 


324.  Qui  tarn  actions,  defined  and 
described  as  they  exist  in  the 
patent  laws. 

325.  The  wrongs    which    are    the 
foundations  of  such  actions. 

326.  The  first  two  of  those  three 
classes  of  wrongs. 


327.  The  third  of  those  three  classes 
of  wrongs. 

328.  Wrongs  of    either    class  are 
completed  when  the  articles 
are  illegally  marked,  without 
any  subsequent  using  or  sell- 
ing. 


XV111 


CONTENTS. 


329.  The  amount  of  the  recovera- 
ble penalty. 

380.  The  parties  in  gut  tarn  patent 
cases. 

331.  The  forum  for  gut  tarn  patent 
actions. 

332.  The  form  of  the  suit,  and  the 


requisites  of  a  declaration,  in 
such  an  action. 

333.  Injunctions    to    restrain    the 
commission     of     wrongs     of 
either  of  the  first  two  classes. 

334.  Appeals    in    qui    tarn    patent 
cases. 


CHAPTER   XVI. 


INFRINGEMENT Pages  283-311 


335.  Infringement  of  process  pat- 
ents, illustrated  by  the  case  of 
Tilghman  •».  Proctor. 

336.  Illustrated    by    the    case    of 
Mowry  v.  Whitney. 

337.  Illustrated    by    the    case    of 
Cochrane  v.  Deener. 

338.  Equivalents  in  processes  and 
additions  thereto. 

339.  Infringement  of    patents    for 
machines  or  manufactures. 

340.  Comparative  results. 

341.  The  test  of  comparative  modes 
of  operation. 

342.  Comparative  modes  of  opera- 
tion as  illustrated  by  the  case 
of  the  Cawood  patent. 

343.  As  illustrated  by  the  Driven- 
Well  cases. 

344.  As  illustrated  by  Blanchard's 
patent    for  turning    irregular 
forms 

345.  As    illustrated    by    Hayden's 
Brass-Kettle  machine. 

346.  As  illustrated  by  the  case  of 
Burr  v.  Duryee. 

346«.A8  illustrated  by  The  Electric 
Signal  case 

347.  Addition. 

348.  Transposition  of  parts. 

349.  Omission. 

350.  Substitution  of  equivalents. 


352.  The  test  of  sameness  of  func- 
tion, of  equivalents. 

353.  The  test  of  substantial  same- 
ness of  way  of  performance. 

354.  Question  of  the  necessity  of 
age  in  equivalents. 

359.  Primary  and  secondary  inven- 
tions in  respect  of  the  doc- 
trine of  equivalents 

362.  Review  of  the  matters  c  onsid- 
ered  in  Section  359. 

363.  Changes  of   form  considered 
in    respect    of    questions    of 
infringement. 

364.  Subject   of    the    last    section 
illustrated    by    the     case    of 
Strobridge  v.  Lindsay. 

365.  Illustrated  by  the  case  of  Ives 
v.  Hamilton. 

366.  Illustrated    by    the    case    of 
Morey  •».  Lockwood. 

367.  Illustrated  by  the  case  of  the 
American  Diamond  Rock  Bor- 
ing Co.  0.  The   Sullivan  Ma- 
chine Co. 

368.  Illustrated    by   the    case    of 
Elizabeth  v.  Pavement  Co. 

369.  Infringement  of    patents    for 
compositions  of  matter. 

370.  Substitution  of  ingredients. 

371.  Substitution  of  ingredients  as 
illustrated  by  the  Giant-Pow- 
der cases. 


CONTENTS. 


XIX 


372.  Disclaimers      of       particular 
equivalents. 

373.  Changes  of  the  proportion  in 
compositions  of  matter. 

374.  The  various  classes  of   com- 
positions of  matter. 


375.  Infringements  of  patents  for 
designs. 

376.  Comparative  utility  not  a  cri- 
terion of  infringement. 

377.  Knowledge  of  a  patent  not  a 
necessary  element  in  its  in- 
fringement. 


CHAPTEK  XVII. 

COURTS,  PARTIES  AND  CAUSES Pages  312-340 


378.  Introductory  explanation. 

379.  Jurisdiction  of   United  States 
courts  of  first  resort  in  patent 
cases. 

380.  Non  -  jurisdiction     of      State 
courts  in  patent  cases. 

388.  Jurisdiction  of    State    courts 
over  controversies  growing  out 
of  contracts  relevant  to  pat- 
ents. 

389.  Jurisdiction      of      individual 
United   States  courts  of  first 
resort  in  patent  cases. 

390.  Qualifications   of  the  rule  of 
the  last  section. 

391.  Jurisdiction   of  the  Court  of 
Claims. 

392.  .Absence  of  jurisdiction  of  the 
Court  of  Claims  over  causes 
of  action  based  on  unauthor- 
ized making,  using,  or  selling 
by  the  United  States  Govern- 
ment of  specimens  of  a  pat- 
ented process  or  thing. 

393.  Presence    of    jurisdiction    of 
United  States  Circuit  Courts 
over  actions  brought  against 
agents  of  the  United  States 
Government,    and    based    on 
unauthorized    making,   using, 
or  selling,  by  those  agents,  on 
behalf  of  the  Government,  of 
specimens  of  a  patented  pro- 
cess or  thing. 


394.  Who    may  be  a    plaintiff   or 
complainant  in  a  patent  action. 

395.  Who  may  be  plaintiff  or  com- 
plainant in  an  action  based  on 
an  assigned  accrued  right  of 
action  for  infringement. 

396.  Executors  and  administrators 
as  plaintiffs  and  complainants. 

397.  Assignees    of     executors    or 
administrators     as     plaintiffs 
and  complainants. 

398.  Attorneys  in  fact  cannot  be 
nominal  plaintiffs  or  com  plain 
ants. 

399.  Owners  in  common  as   joint 
plaintiffs  or  complainants. 

400.  Licensees  cannot  be  nominal 
plaintiffs,    nor    sole    nominal 
complainants. 

401.  Who  may  be  made  a  defend- 
ant in  a  patent  action. 

402.  Minors,  married  women,  and 
lunatics  as  defendants 

403.  Agents,  salesmen,  and  employ- 
ees as  defendants. 

404.  Employers  as  defendants. 

405.  Persons    as    defendants   who 
have  caused  others  to  infringe. 

406.  Joint  infringers  as  defendants. 

407.  What    facts   constitute    joint 
infringement. 

408.  Partners  as  defendants. 

409.  Private  corporations  as  defend- 
ants. 


CONTENTS. 


410.  Officers,  directors,  and  stock- 
holders   of    corporations    as 
defendants. 

411.  The  same  subject  continued. 

412.  Stockholders  of  corporations. 

413.  Officers  of  corporations. 

414.  Directors  of  corporations. 

415.  Statutory  liability  of  officers, 
directors,  and  stockholders  of 
corporations. 


416.  Consolidated  corporations  as 
defendants  in  actions  based  on 
infringements  committed    by 
their  constituent  corporations. 

417.  Causes  of  action  based  on  a 
plurality    of    patents,    or    on 
both  terms    of    an    extended 
patent,  or  on  a  patent  and  a 
trade-mark. 


CHAPTER   XVIII. 


ACTIONS  AT  LAW Pages  341-423 


418.  Actions    of    trespass    on    the 
case. 

419.  The  question  of  the  propriety 
of  actions  of  assumpsit  for  in- 
fringements of  patents,  consid- 
ered in  the  light  of  precedents. 

420.  Considered  in  the  light  of  ex- 
pediency. 

421.  Forms    of   civil   actions   pre- 
scribed  by   State   codes  and 
statutes,  where  applicable  to 
patent  cases. 

422.  Declarations  in  trespass  on  the 
case. 

423.  The  statement  of  the  right  of 
action,  in  respect  of  the  inven- 
tor. 

424.  In  respect  of  the  novelty  and 
utility  of  the  invention. 

425.  In  respect  of  the   absence  of 
public  use  or  sale  more  than 
two  years  before  application 
for  a  patent. 

426.  In    respect    of  the    patentee, 
where  he  is  another  than  the 
inventor. 

427.  In  respect  of  the  application 
for  the  patent. 

428.  In  respect  of  the  letters  patent. 

429.  In  respect  of  a  reissue. 

430.  In  respect  of  a  disclaimer. 


431.  In  respect  of  an  extension. 

432.  In    respect  of    the   plaintiff's 
title. 

433.  In  respect  of  profert  of  title. 
433a.  In  respect  of  marking  "  pat- 
ented." 

434.  In  respect  of  infringement. 

435.  In  respect  of  the  time  of  in- 
fringement. 

436.  In  respect  of  the  damages. 

437.  The  conclusion  of  the  declara- 
tion. 

438.  Substantial  and  not  technical 
accuracy  required  in  declara- 
tions. 

439.  Dilatory  pleas. 

440.  Twenty-seven  defences  plead- 
able  in  bar  in  patent  actions. 

441.  The    twenty-seven    defences 
reviewed  in  respect  of  their 
natures  and  effects. 

442.  Special  pleading. 

443.  The  general  issue  accompanied 
by  a  statutory  notice  of  special 
matter. 

444.  Notices  of  special  matter. 

445.  Defences   based    on    facts    of 
which  courts  take  judicial  no- 
tice, need  not  be  pleaded. 

446.  The  first  and  second  defences. 

447.  The  third  defence. 


CONTENTS. 


XXI 


448.  The  fourth  defence. 

449.  The  fifth  and  sixth  defences. 

450.  The  seventh  defence. 

451.  The  eighth  defence. 

452.  The  ninth  and  tenth  defences. 

453.  The  eleventh  defence. 

454.  The  twelfth  defence. 

455.  The  thirteenth  defence. 

456.  The  fourteenth  defence. 

457.  The  fifteenth  defence. 

458.  The  sixteenth  defence. 

459.  The  seventeenth  defence. 

460.  The  eighteenth  defence. 

461.  The  nineteenth  defence. 

462.  The  twentieth  defence. 

463.  The  twenty-first  defence. 

464.  The  twenty-second  defence. 

465.  The  twenty-third  and  twenty- 
fourth  defences. 

466.  The  twenty-fifth  defence. 

467.  The     twenty-sixth     defence : 
estoppel. 

468.  Estoppel  by  matter  of  record: 
resjudicata 

469.  Estoppel  by  matter  of  deed. 

470.  The  twenty-sixth  defence;  how 
pleaded. 

471.  The  twenty-seventh   defence; 
statutes  of  limitations. 

472.  The  national  statute  of  limita- 
tion. 

476.  State  statutes  of  limitations  do 
not  apply  to  any  right  of  action 
which    is    attended    to    by  a 
national  statute  of  limitation. 

477.  State  statutes  do  apply  to  all 
rights  of  action  which  are  not 
attended    to    by    a    national 
statute  of  limitation. 

478.  Replications,  rejoinders,    and 
sur-rejoinders,  where  licenses 
or  releases  are  pleaded. 

479.  Replications,    where  the  na- 
tional statute  of  limitation  is 
pleaded. 

480.  Replications    and    rejoinders 
where  a  State  statute  of  limi- 


tation is  pleaded. 

481.  The  similiter. 

482.  Demurrers. 

483.  Demurrers  to  declarations. 

484.  Demurrers  to  pleas. 

486.  Joinders  in  demurrer. 

487.  Trial  of  actions  at  law  for  in- 
fringement of  patents. 

488.  Trial  by  jury. 

489.  Rules  of  practice. 

490.  Rules  of  evidence. 

491.  Letters  patent  as  evidence. 

492.  Reissue  letters  patent  are  pri- 
ma  facie  evidence  of  their  own 
validity. 

494.  Letters  patent  presumed  to  be 
in  force  till  the  end  of  the  term 
expressed  on  their  face. 

495.  Evidence  of  title. 

496.  Neither  licenses,  nor  releases, 
need  be  negatived  in  a  plain- 
tiff 's  prima  facie  evidence. 

497.  Evidence  of   the   defendant's 
doings. 

498.  Expert    evidence  of  infringe- 
ment. 

499.  Hypothetical     questions    for 
experts. 

500.  Expert  testimony   relevant  to 
the  state  of  the  art. 

501    Cross-examination  of  experts. 

502.  Evidence  of  damages. 

503.  Defendant's  evidence  in  chief. 

504.  Evidence  to   sustain  the  first 
defence 

505.  To  sustain  the  second  defence. 

506.  To  sustain  the  third  defence, 
when  based  on  prior  patents. 

507.  When  based  on  prior  printed 
publications. 

508.  When  based  on  prior  knowl- 
edge or  use. 

509.  Rebutting    evidence    to    the 
third  defence,  when  based  on 
prior  knowledge  or  use. 

510.  Rebutting    evidence    to    the 
third  defence,  however  based. 


XX11 


CONTENTS. 


511.  Evidence  to  sustain  the  fourth 
defence. 

512.  To  sustain  fifth  defence. 

513.  The  sixth  defence. 

514.  The  seventh  defence. 

515.  The  eighth  defence. 

516.  The  ninth  defence. 

517.  The  tenth  defence. 

518.  The  eleventh  defence. 

519.  The  twelfth  defence. 

520.  The  thirteenth  defence. 

521.  The  fourteenth  defence. 

522.  The  fifteenth  defence. 

523.  The  sixteenth  defence 

524.  The  seventeenth  defence. 

525.  The  eighteenth  defence. 

526.  The  nineteenth  defence. 

527.  The  twentieth  defence. 

528.  The  twenty-first  defence. 

529.  The  twenty-second  defence. 

530.  The  twenty-third  defence. 

531.  The  twenty- fourth  defence. 

532.  The  twenty-fifth  defence. 

533.  The  twenty-sixth  defence. 

534.  The  twenty- seventh  defence. 

535.  How  testimony  is  taken  in  ac- 
tions at  law. 


536.  When  the    judge  may  direct 
the  jury  to  return  a  verdict  for 
the  defendant. 

537.  Instructions  to  juries. 

538.  Verdicts. 

539.  New  trials. 

540.  Trials  by  a   judge  without  a, 
jury. 

541.  Trial  by  referee. 

542.  Judgments. 

543.  Costs. 

544.  Costs  under  the  statute. 

545.  Attorney's  docket  fees. 

546.  Clerk's  fees. 

547.  Magistrate's  fees. 

548.  Witness  fees. 

549.  Taxation  of  costs. 

550.  Writs  of  error. 

551.  Bills  of  exception. 

552.  Erroneous    instructions,     and 
refusals  to  instruct. 

553.  Exception  to  instructions,  and 
to  refusals  to  instruct. 

554.  Time  when  exceptions  must 
be  noted,  and  time  when  bills 
of  exception  must  be  drawn 
up  and  signed. 


CHAPTER   XIX. 

DAMAGES Pages  424-439 


555.  The  generic  measure  of  dam- 
ages. 

556.  Established  royalties  as  spe- 
cific measures  of  damages. 

557.  Tests  applied  to  royalties  on 

behalf  of  defendants. 

558.  Tests  applied  to  royalties  on 
behalf  of  plaintiffs. 

559.  Money  paid  for  infringement 
already  committed,  is  no  meas- 
ure of    damages    in    another 
case. 

560.  Royalties  reserved  on  sales  of 
patents. 

561.  Royalties  for  licenses  to  make 


and    use,    and    royalties    for 
licenses  to  make  and  sell. 

562.  Proportion  of  licensed  to  unli- 
censed practice  of  an  invention. 

563.  Measure  of  damages    in  the 
absence    of     an     established 
royalty. 

564.  Damages  for  unlicensed  mak- 
ing, without  unlicensed  selling 
or  using. 

565.  Evidence  of  damages. 

566.  Indirect    consequential    dam- 
ages. 

567.  Exemplary  damages. 

568.  Increased  damages. 


CONTENTS. 


XX111 


569.  Actual  damages  not  affected 
by  infringement  being   unin- 
tended. 

570.  Counsel    fees    and    other  ex- 


penses. 

571.  Interest  on  damages. 
571a.  Damages  in  design  cases. 


CHAPTEE  XX. 

ACTIONS  IN  EQUITY Pages  440-499 


572.  Jurisdiction  of  equity  in  patent 
causes. 

573.  Jurisdiction  of  equity  to  assess 
and  decree  damages. 

574.  The  complainant. 

575.  The  defendant. 

576.  Original  bills. 

577.  The  title  of  the  court. 

578.  The  introductory  part. 

579.  The  stating  part. 

580.  The  prayer  for  relief 

581.  The  interrogating  part. 

582.  The  prayer  for  process. 

583.  The  signature. 

584.  The  oath. 

585.  Bills  to  perpetuate  testimony. 

586.  Amendments    to    bills,   when 
allowed. 

587.  Amendments    to    bills,    when 
necessary. 

588.  Demurrers,  pleas  and  answers. 

589.  Pleas  in  equity. 

590.  Arguments  upon    pleas,    and 
replications  to  pleas. 

591.  Defences  in  equity  cases. 

592.  Non-jurisdiction  of  equity. 

593.  The  same  subject  continued. 

594.  Non-jurisdiction  in  equity, how 
set  up  as  a  defence. 

595.  Prior  adjudication  at  law  is 
not  necessary  to  jurisdiction 
in  equity. 

596.  Laches. 

597.  Laches,  how  set  up. 

598.  The  first  of  the  twenty-seven 
defences. 

599.  The  second  defence. 


600.  The  third  defence. 

601.  The  fourth  defence. 

602.  The  fifth  and  sixth  defences. 

603.  The  seventh  defence. 

604.  The  eighth  defence. 

605.  The  ninth  and  tenth  defences. 

606.  The  eleventh  defence. 

607.  The  twelfth  defence. 

608.  The  thirteenth  defence. 

609.  The  fourteenth  defence. 

610.  The  fifteenth  defence. 

611.  The  sixteenth  defence. 

612.  The  seventeenth  defence. 

613.  The  eighteenth  defence. 

614.  The  nineteenth  defence. 

615.  The  twentieth  defence. 

616.  The  twenty-first  defence. 

617.  The  twenty-second  defence. 

618.  The  twenty-third  defence. 

619.  The  twenty,  fourth  defence. 

620.  The  twenty-fifth  defence. 

621.  The  twenty-sixth  defence. 

622.  The  twenty-seventh  defence. 

623.  Replications. 

624.  Subordinate    bills    in    aid    of 
original  bills. 

625.'  Supplemental  bills. 

626.  Bills  in  the  nature  of  supple- 
mental bills. 

627.  Bills  of  revivor. 

628.  Bills  in  the  nature  of  bills  of 
revivor. 

629.  Bills  of    revivor  and  supple- 
ment. 

630.  Leave  of  court  to  file  supple- 
mental bills,  and  bills  in  the 
nature  of  supplemental  bills. 


XXIV 


CONTENTS. 


631.  Demurrers,  pleas  and  answers 
to  supplemental  bills  and  to 
bills  in  the  nature  of  supple- 
mental bills. 

632.  Hearings. 

633.  Interlocutory  hearings. 

634.  Questions  of  law  arising  on 
hearings. 

635.  Questions  of  fact  arising  on 
hearings. 

636.  Evidence  in  support  of  the  bill. 

637.  Evidence    in    support    of  de- 
fences. 

638.  Testimony. 

639.  Depositions. 

640.  Depositions    taken    in    other 
cases. 

641.  Documentary  evidence. 

643.  Trial  by  jury  in  equity  cases. 

643.  Hearings  by  masters  in  chan- 
cery. 

644.  Interlocutory  decrees. 

644a.  Appeals    from  interlocutory 


decrees. 

645.  Petitions  for  rehearings. 

646.  Rehearings  for  matter  appar- 
ent on  the  record. 

647.  Rehearings     on     account    of 
newly  discovered  evidence. 

648.  Supplemental     bills     in     the 
nature  of  bills  of  review. 

649.  Final  decrees 

650.  Bills  of  review. 

651.  Bills    of    review    to    correct 
errors  apparent  on  the  plead- 
ings or  final  decree. 

652.  Bills  of  review  to  introduce 
evidence  discovered  after  the 
entry  of  the  final  decree. 

653.  Bills  in  the  nature  of  bills  of 
review. 

654.  Appeals 

655.  Hearings  on  appeals. 

656.  Decisions  on  appeals. 

657.  Certificates    of      division    of 
opinion. 


CHAPTER   XXI. 

INJUNCTIONS Pages  500-542 


658.  Jurisdiction  to  grant  injunc- 
tions. 

659.  Preliminary  injunctions. 

660.  Bills  for  preliminary  injunc- 
tions. 

66 1 .  Notices  of  motions  for  prelimi- 
nary injunctions. 

662.  Motions    for    preliminary  in- 
junctions. 

663.  Suspensions    of    motions    for 
preliminary  injunctions. 

664.  Temporary  restraining  orders. 

665.  Elements  of  prima  facie  rights 
to  preliminary  injunctions. 

666.  Prior  adjudication. 

667.  Public  acquiescence. 

668.  Duration  of    public  :  acquies- 
cence in  a  strict  monopoly. 


669.  Duration    of    public  acquies- 
cence in  a  licensed  monopoly. 

670.  Public  acquiescence  need  not 
be  universal  to  be  efficacious. 

671.  Decrees  pro  confesso. 

672.  Consent  decrees. 

673.  Defendant's  admission  of  va- 
lidity. 

674.  Interference  decision. 

675.  The  complainant's  title. 

676.  Infringements. 

677.  Defences  to  motions  for  pre- 
liminary injunctions ;  and  first 
by  way  of  traverse. 

678.  Defences  by  way  of  confession 
and  avoidance. 

679.  Averting  effect  of  prior  adjudi- 
cation. 


CONTENTS. 


XXV 


680.  Averting  effect  of  public  acqui- 
escence. 

681.  Averting    preliminary  injunc- 
tion by  proving  repeal  or  expi- 
ration of  patent,  or  fault  in 
title  thereto. 

682.  Averting  preliminary  injunc- 
tion by  proving  license. 

683.  By  proving  estoppel. 

684.  By  showing  laches. 

685.  Preliminary   injunction   must 
generally  follow  a  cause  and 
an  application  therefor. 

686.  Bonds  instead  of  injunctions, 
where  complainant  grants  li- 
censes. 

687.  Where  infringing    machinery 
embodies  non-infringing  feat- 
ures, also  in  some  other  cases. 

688.  Bonds  required  from  complain- 
ants in  certain  cases. 

689.  Injunctions  not  averted  by  the 
existence  of  a  remedy  at  law. 

690.  Injunctions    pro    confesso    on 
withdrawal  of  opposition  to  a 
motion  for  an  injunction. 

691.  Discretion    of    the    court    in 
granting  or   refusing    injunc- 
tions. 

692.  Motions  to    dissolve  prelimi- 
nary injunctions. 

693.  Motions  to  dissolve  for  errors 
in  point  of  law. 

694.  Motions  to  dissolve  on  account 
of  newly  discovered  evidence. 

695.  Reinstatement     of    dissolved 
injunctions. 


696.  Consequences  of  obedience  or 
disobedience     to     injunctions 
which  are    subsequently  dis- 
solved. 

696ffl.  Appeals     from    preliminary 
injunctions. 

697.  Permanent  injunctions. 

698.  Refusal  of  permanent  injunc- 
tion, because  the  patent  has 
expired. 

699.  Because  the  complainant  has 
assigned  the  patent. 

700.  Because  the  defendant  is  dead, 
or,   if    a  corporation,  is    dis- 
solved. 

701.  Cessation  of  infringement  no 
ground  for  refusal  to  enjoin. 

702.  Postponement    of    permanent 
injunctions. 

703.  Suspension  of  permanent  in- 
junctions    pending      appeals 
therefrom. 

704.  Dissolution  of  permanent  in- 
junctions. 

705.  Injunctions  granted  independ- 
ent of  other  relief,  and  against 
complainants  in  certain  cases. 

706.  The    duration  of    injunctions 
generally  limited  by  the  term- 
of  the  patent. 

707.  The    duration  of    injunctions 
granted  by  district  judges  in 
vacation. 

708.  Attachments  for  contempt. 

709.  Improper  defences  to  motions 
for  attachments. 

710.  Penalties  for  violations  of  in- 
junctions. 


CHAPTER  XXII. 

PROFITS Pages  543-567 


711.  The  infringer's  profits  recov- 
erable in  equity. 

712.  In  cases  of  joint  infringement. 

713.  In  cases  of  infringement  partly 
unprofitable. 


714.  What  spaces  of  time  an  ac- 
count of  profits  may  cover. 

715.  The  generic  rule  for  ascertain- 
ing infringer's  profits. 


XXVI 


CONTENTS. 


716.  Complainant's     damages    no 
criterion  of  defendant's  prof- 
its. 

717.  Defendant's  profits  in  cases  of 
unlawfully  making  and  selling 
articles  covered  by  the  com- 
plainant's patent. 

718.  Method  of  ascertaining  cost 
of  making  and  selling  infring- 
ing articles. 

719.  Burden  of   proof  when  it  is 
necessary  to  separate  profits 
due    to    patented      features, 
from  profits  due  to  other  fea- 
tures of  an  infringing  article. 

720.  Method  of  making  the  sepa- 
ration where  defendant  made 
and  sold  the  patented  inven- 
tion   separately,    as    well   as 
in     connection    with     other 
things. 

721.  Method  where  defendant  pays 
royalty  for  right  to  make  and 
sell  the  features  not  covered 
by  the  patent  in  suit. 

722.  Cases  where  no  separation  is 
required  or  allowed. 

723.  Method  of  making  the  separa- 
tion by  the  criterion  of  com- 
parative cost. 

723a.Defendant's  profits  in  design 
cases. 

724.  Defendant's  profits  in  cases  of 
unlawfully     selling     articles 
partly  or  wholly  covered  by 
complainant's  patent. 

725.  Defendant's  profits  in  cases  of 


unlawful   using    of    patented 
processes  or  things. 

729.  Affirmative  gain. 

730.  Saving  from  loss. 

731.  Affirmative  gain  and  saving 
from  loss. 

732.  Standard  of  comparison  need 
not  have  been  used    by  the 
infringer. 

734.  Method     of      selecting     the 
proper  standard  of  compari- 
son. 

735.  The  rule  as  to  using  has  only  a 
limited  application  to  cases  of 
infringement    by  making    or 
4>y  selling. 

736.  Interest  on  infringer's  profits. 

739.  Proceedings  before    masters. 

740.  Evidence  before  masters. 

741.  Objections  to  evidence  before 
masters. 

742.  Questions  of  the  extent  of  the 
defendant's  infringement. 

743.  Questions  relevant  to  different 
sorts  of    defendant's  alleged 
infringement. 

744.  Master's  Reports. 

745.  Exceptions  to  master's  report. 

746.  Defendants'      exceptions      to 
master's  reports. 

747.  Defendants'  affirmative  excep- 
tions to  master's  reports. 

748.  Defendants'    negative    excep- 
tions to  master's  reports. 

749.  Complainants'   exceptions    to 
master's  reports. 

750.  Outline  of    practice  relevant 
to  master's  findings. 


CONTENTS. 


XXV11 


APPENDIX. 


THE  PATENT   STATUTES. 

THE  REPEALED  STATUTES Pages  571-652 


PAGE 

Patent  Act  of  1790 571   Patent  Act  of  1849 615 

1852 615 

Feb.  18,  1861 616 

March  2,  1861.. ..617 

1862... 624 

1863 624 

1864 625 

1865 626 

1866 626 

1870 627 

March  3,  1871. ...651 
March  24,  1871... 651 

THE  REVISED  STATUTES Pages  652-678 


PAGE 

1790  

....571 

1793  

....575 

1794  

....580 

1800  

....581 

1819  

....582 

July3,  1832.. 

....583 

July  13,  1832. 

....585 

1836  

....586 

1837  

....600 

1839  

....607 

1842  

....611 

1848  

613 

SECTION. 

440.  Clerks  and  employees. 

441.  Secretary  of  the  Interior. 

475.  Establishment  of   the  Patent 
Office. 

476.  Officers  and  employees. 

477.  Salaries. 

478.  Seal. 

479.  Bonds  of    Commissioner  and 
Chief  clerk. 

480.  Restrictions  upon  officers  and 
employees. 

481.  Duties  of  Commissioner. 

482.  Duties  of  examiners-in-chief . 

483.  Establishment  of  regulations. 

484.  Arrangement  and  exhibition  of 
models,  &c. 

485.  Disposals  of  models  on  rejected 
applications. 


SECTION. 

486.  Library. 

487.  Patent-agents  may  be  refused 
recognition. 

488.  Printing  of  papers  filed. 

489.  Printing  copies  of  claims,  laws, 
decisions,  &c. 

490.  Printing      specifications     and 
drawings. 

491.  Additional  specifications  and 
drawings. 

492.  Lithographing  and  engraving. 

493.  Price  of  copies  of  specifications 
and  drawings. 

494.  Annual  report  of  the  Commis- 
sioner. 

496.  Disbursements      for      Patent 

Office. 
629.  Jurisdiction  of  Circuit  Courts. 


XXV111 


CONTENTS. 


SECTION. 

699.  Writs  of  error  and  appeals, 
without  reference  to  amount. 

892.  Copies  of  records.  &c.,  of  Pat- 
ent Office. 

893.  Copies  of  foreign  letters  pat- 
ent. 

894.  Printed    copies  of   specifica- 
tions and  drawings    of    pat- 
ents. 

973.  Costs  where  disclaimers  are 
necessary. 

4883.  Patents,  how  issued,  attested^ 
and  recorded. 

4884.  Their  contents  and  duration. 

4885.  Date  of  patent 

4886.  What  inventions  are  patent- 
able. 

48N7.  Patents  for  inventions  previ- 
ously patented  abroad. 

4888.  Requisites    of    specification 
and  claim. 

4889.  Drawings,  when  requisite. 

4890.  Specimens  of  ingredients,  &c. 

4891.  Model,  when  requisite. 

4892.  Oath  required  from  applicant. 
4^-93.  Examination  and  issuing  pat- 
ent. 

4894.  Limitation  upon  time  of  com- 
pleting application. 

4895.  Patents  granted  to  assignees. 

4896.  When,   and    on    what    oath, 
executor     or    administrator 
may  obtain  patent. 

4897.  Renewal    of    application    in 
cases  of  failure  to  pay  fees 
in  season. 

4898.  Assignment  of  patents. 

4899.  Persons  purchasing  of  inven- 
tor   before    application  may 
use  or   sell   the  thing  pur- 
chased. 

4900.  Patented    articles   must    be 
marked  as  such. 

4901.  Penalty  for  falsely  marking 
or  labelling  articles  as  pat- 
ented. 


SECTION. 

4902.  Filing  and  effect  of  caveats. 

4903.  Notice  of  rejection  of  claim 
for  patent  to  be  given  to  appli- 
cant. 

4904.  Interferences. 

4905.  Affidavits  and  depositions. 

4906.  Subpoenas  to  witnesses. 

4907.  Witness  fees. 

4908.  Penalty  for  failing  to  attend 
or  refusing  to  testify. 

4909.  Appeals  from  primary  exam- 
iners to  examiners-in-chief. 

4910.  From  examiners-in-chief    to 
Commissioner. 

4911.  From  the    Commissioner  to 
the  Supreme  Court,  D.  C. 

4912.  Notice  of  such  appeal. 

4913.  Proceedings  on  appeal  to  Su- 
preme Court,  D.  C. 

4914.  Determination  of  such  appeal 
and  its  effect. 

4915.  Patents  obtainable  by  bill  in 
equity. 

4916.  Reissue  of  defective  patents. 

4917.  Disclaimer. 

4918.  Suits    touching     interfering 
patents. 

4919.  Suits  for  infringement ;  dam- 


4920.  Pleading  and  proof  in  actions 
for  infringement. 

4921.  Power    of    courts    to    grant 
injunctions  and  estimate  dam- 
ages. 

4922.  Suit  for  infringement  where 
specification  is  too  broad. 

4923.  Patent  not  void  on  account  of 
previous  use  in  foreign  coun- 
try. 

4924   Extension  of  patents  granted 
prior  to  March  2,  1861. 

4925.  What  notice  of   application 
for  extension  must  be  given. 

4926.  Applications  for  extension  to 
whom  to  be  referred. 


CONTENTS. 


XXIX 


SECTION. 

4927.  Commissioner    to  hear    and 
decide  the  question  of  exten- 
sion. 

4928.  Operation  of  extension. 

4929.  Patents  for  designs  author- 
ized. 

4980.  Models  of  designs. 
4931.  Duration  of  patents  for  de- 
signs. 


SECTION. 

4932.  Extension  of  patents  for  de- 
signs. 

4933.  Patents  for  designs  subject  to 
general  rules  of  patent  law. 

4934.  Fees  in    obtaining    patents, 
&c. 

4935.  Mode  of  payment. 

4936.  Refunding. 


PAGE. 

THE  PATENT  STATUTE   OF  1875 678 

THE  PATENT   STATUTE  OF   1887 679 

THE  PATENT   STATUTE  OF   1888 680 

THE  JUDICIARY  ACT   OF   1891 681 

THE  JUDICIARY  ACT   OF   1893 683 

FOBMS  OF  PATENT  PLEADINGS. 

PAGE. 

DECLARATION 685 

PLEA  IN   BAR 688 

REPLICATION 690 

REJOINDER 691 

SUR-REJOINDER 692 

BILL  OF    COMPLAINT 692 

PLEA  IN  EQUITY 697 

ANSWER 699 

REPLICATION  IN  EQUITY 702 


TABLE  OF  CITED  CASES. 


Names  of  Cases.  Where  reported.  Pages  in  this  book 

Abbett®.  Zusi 5  Barm.  &  Ard 242 

Abbott  Machine  Co.  v.  Bonn 51  Fed.  Rep 40 

Accumulator  Co.  v.  Edison  Illu- 
minating Co 63  Fed.  Rep 521 

Accumulator  Co.  v.  Julien  Elec- 

tricCo 57  Fed.  Rep 145 

Accumulator  Co.  v.  Storage  Co 53  Fed.  Rep 518,  525,  539 

Acme    Hay    Harvesting    Co.    «. 

Martin 33  Fed.  Rep 42 

Adams  v.  Bellaire  Stamping  Co.... 28  Fed.  Rep 23 

Adams  v.  Brown 7  Gushing 567 

Adams  v.  Burke 17  Wallace 150,  244,  251,  254 

Adams®.  Howard 19  Fed.  Rep 414,  455 

Adams  v.  Howard 22  Fed.  Rep 260,261 

Adams*.  Iron  Co 26  Fed.  Rep 455,  457 

Adams  v.  Jones 1  Fisher 98 

Adams  v.  Keystone  Mfg.  Co 41  Fed.  Rep 550,  561 

Adams  v.  Loft 4  Bann.  &  Ard 42 

Adams  v.  Mfg.  Co 3  Bann.  &  Ard 295 

Adams  «.  Stamping  Co 141  U.  S 33,  44,  62 

Adams  ®.  Stamping  Co 25  Fed.  Rep 321 

Adams®.  StampingCo 28  Fed.  Rep 426 

Adams  Electric  Ry.  Co.  ».  Lindell 

Ry.  Co 63  Fed.  Rep „.     42 

Adee  v.  Peck 42  Fed.  Rep 25 

Adee  v.  Thomas 41  Fed.  Rep 5,  375 

Adriance®.  McCormick  Mach.  Co.  55  Fed.  Rep 316,  326 

Agawam  Co.  •».  Jordan 7  Wallace 48,  81,  215,  217,  218, 

223,  230,  364,  366,  397,  461 

Ager  W.Murray 105  U.  S 136,  245,  246 

Aiken  v.  Bemis 3  Woodbury  &  Minot 298,  410,  411 

Aiken  v.  Dolan 3  Fisher 44,  187 

Aiken  0.  Print  Works 2  Cliff 227 

Alabastine  Co.  v.  Payne 27  Fed.  Rep 331 

Albany  Steam  Trap  Co.  «.  Felt- 

housen 20  Fed.  Rep 414 


XXX11  TABLE    OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Albright®.  Teas 106  U.  S 315 

Alden  v.  Dewey 1  Story 410 

Allen  v.  Blunt 2  Woodbury  &Minot 410 

Allen  «.  Deacon 21  Fed.  Rep , 360 

Allen  v.  Steele 64  Fed.  Rep 23,45 

Allis   v.  Buckstaff 13  Fed.  Rep '. 462 

Allis  v.  Stowell 5  Bann.  &  Ard 489 

Allis  t».  Stowell 19  Off.  Gaz 538 

Allis  v.  Stowell 16  Fed.  Rep 536 

Allison  «.  Brooklyn  Bridge 29  Fed.  Rep 162,  164 

Allred  ».  Bray 41  Missouri 329 

Alteneck's  Appeal 23  Off.  Gaz.... 109 

Am  Ende  v  Seabury 43  Fed.  Rep .....431,  547 

American    Ballast    Log    Co.    ». 

Cotter 11  Fed.  Rep 479 

American  Bell  Telephone  Co.  v. 

Albright 32  Fed.  Rep 265 

American  Bell  Telephone  Co.  v. 

Brown  Tel  Co 58  Fed    Rep 519 

American  Bell  Telephone  Co.  v. 

Cushman 57  Fed.  Rep 143,  328 

American  Bell  Telephone  Co.  v. 

Cushman  Telephone  Co 35  Fed.  Rep 78 

American  Bell  Telephone  Co.  v. 

Cushman  Telephone  Co 36  Fed.  Rep 533 

American  Bell  Telephone  Co.  v. 

Dolbear 15  Fed.  Rep 303 

American  Bell  Telephone  Co.  v. 

Globe  Telephone  Co 31  Fed.  Rep 69 

American  Bell  Telephone  Co.  «. 

Kitsell 35  Fed.  Rep 487 

American  Bell  Telephone  Co.  v. 

McKeesport  Telephone  Co 57  Fed.  Rep 508 

American   Bell  Telephone  Co.  v. 

National  Telephone  Co 27  Fed.  Rep 275,  374 

American  Bell  Telephone  Co.  v. 

People's  Telephone  Co 22  Fed.  Rep 69 

American  Bell  Telephone  Co.  v. 

Service  Co 45  Off.  Gaz 134 

American  Bell  Telephone  Co.  v. 

Southern  Telephone  Co 34  Fed.  Rep 351,  354.  445,  458,  480 

American  Bell  Telephone  Co.  v. 

Spencer 8  Fed.  Rep 184,  303 

American  Bell  Telephone  Co.  v. 

United  States 68  Fed.  Rep 82,  275 

American    Box    Machine   Co.  v. 

Day 32  Fed.  Rep 297 


TABLE   OF   CITED   CASES.  XXXlli 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

American  Cable  Ry.  Co.  v.  Chi- 
cago City  Ry.  Co 41  Fed.  Rep 456 

American  Cable  Ry.  Co.  «.  New 

York 56  Fed.  Rep 25 

American  Clay  Bird  Co.  v.  Clay 

Pigeon  Co 31  Fed.  Rep 271 

American  Cotton  Tie  Supply  Co. 

v.  McCready 17  Blatch 536 

American  Cotton-Tie  Co.  v.  Sim- 
mons  106  U.  S 254 

American  Diamond  Drill  Co.  v. 

Machine  Co 32  Fed.  Rep 559 

American  Diamond  Rock  Boring 

Co.  v.  Marble  Co 2  Fed.  Rep 532 

American  Diamond  Rock  Boring 

Co.  v.  Sheldon 1  Fed.  Rep 532 

American  Diamond  Rock  Boring 

Co.  •».  Sheldon 18  Blatch 488 

American  Diamond  Rock  Boring 

Co.  v.  Sullivan  Machine  Co 14  Blatch 305 

American    Dunlop    Tire    Co.  «. 

Erie  Rubber  Co 66  Fed.  Rep 165 

American  Electric  Co.  v.  Con- 
sumers' Gas  Co 47  Fed.  Rep 258 

American  Feather  Duster  Co.  v. 

Levy 43  Fed.  Rep 26 

American    Graphophone    Co.   v. 

Edison  Phonograph  Works.... 72  Off  Gaz 453 

American  Hide  and  Leather  Split- 
ting Machine  Co.  v.  Machine 
Co 4  Fisher 107 

American  Insurance  Co.  0.  Canter... 1  Peters 497 

American  Linoleum  Co.  v.  Nairn 

Linoleum  Co 44  Fed.  Rep 386 

American  Middlings  Purifier  Co. 

v.  Atlantic  Milling  Co....: 3  Bann.  &  Ard 523 

American  Middlings  Purifier  Co. 

v.  Christian 3  Bann.  &  Ard 478,  480,  507.  520, 

522,  534 

American  Middlings  Purifier  Co. 

«.  Vail 15  Blatch 526 

American  Nicholson    Pavement 

Co.  «.  Elizabeth 4  Fisher 517,  525 

American    Nicholson    Pavement 

Co.  «.  Elizabeth 1  Bann.  &  Ard 548 

American  Paper  Bag  Co.  v.  Van 

Nortwick 52  Fed.  Rep 255 


<L 


XXXIV  TABLE   OF   CITED   CASES. 

Names  of  Cases.                                             Where  reported.                        Pages  in  this  book. 
American  Paper  Pail  Co.  v.  Na- 
tional Folding  Box  Co 51  Fed.  Rep 532 

American  Road  Machine  Co.  v. 

Pennock  &  Shark  Co 45  Fed.  Rep 42 

American  Roll  Paper  Co.  v.  Knopp.44  Fed.  Rep 268 

American  Roll  Paper  Co.  v.  Wes- 

ton '. 45  Fed.  Rep 53,  54,  299 

American  Roll  Paper  Co.  v.  Wes- 

ton 51  Fed.  Rep 59 

American  Roll  Paper  Co.  v.  Wes- 

ton '. 59  Fed.  Rep 70 

American  Saddle  Co.  v.  Hogg 6  Fisher 490 

American  Shoe  Tip  Co.  «.  Pro- 
tector Co 2  Bann.  &  Ard 199 

Ames  «.  Howard 1  Sumner 158,  411 

Amest>.  Spring  Bed  Co 24  Fed.  Rep 34 

Ames  &  Frost  Co.  ».  Woven  Wire 

Mach.  Co 59  Fed.  Rep 462 

Anderson*.  Eiler 46  Fed.  Rep 83,  92 

Anderson®.  Eiler 50  Fed.  Rep 264 

Anderson  v.  Monroe 55  Fed.  Rep 86 

Anderson  v.  Pittsburgh  Lumber 

Co 47  Fed.  Rep 439,  552 

Andersons.  Saint 46  Fed.  Rep 19,  60,  96,  439 

Andrews  v.  Carman 2  Bann.  &  Ard 62 

Andrews  «.  Hovey 123  U.  S 83,  86,  396 

Andrews  «.  Hovey 124  U.  S 396 

Andrews  «.  Long 12  Fed.  Rep 290 

Andrews  •».  Spear 3  Bann.  &  Ard 522 

Anilin  v.  Higgin 15  Blatch 198 

Anson  ®.  Woodbury 12  Off.  Gaz 120 

Ansonia  Co.  •».  Electrical  Supply 

Co 144  U.  S 42,  43 

Ansonia  Brass  &  Copper  Co.  v. 

Electrical  Supply  Co 32  Fed.  Rep 42 

Ansonia  Brass  &  Copper  Co.  v. 

Electrical  Supply  Co 35  Fed.  Rep 42 

Appleton  «.  Ecaubert 62  Fed.  Rep 271 

AppletonMfg.  Co.  v.  Starr  Mfg.  Co.51  Fed.  Rep 34 

Appleton  Mfg.  Co.  v.  Starr  Mfg.  Co. 60  Fed.  Rep 6 

Arey  v.  DeLoriea 55  Fed.  Rep 409 

Armstrong    v.    Savannah     Soap 

Works 53  Fed.  Rep 334 

Arnold  v.  Bishop 1  McArthur's  Patent  Cases 50,  120 

Arnold  v.  Chesebrough 35  Fed.  Rep 483 

Arnold  v.  Phelps 20  Fed.  Rep 287 


TABLE    OF   CITED   CASES.  XXXV 

Names  of  Cases  Where  reported.  Pages  in  this  book. 

Aron  v.  Manhattan  Ry.  Co 26  Fed.  Rep 42 

Aron  v.  Railway  Co 132  U.  S 42 

Arthurs.  Griswold 55  New  York 338 

Asbestine  Mfg.  Co.  v.  Hepp 39  Fed.  Rep 327 

Asbestos    Felting    Co.    «.    Sala- 
mander Felting  Co 13  Blatch 272,  536 

Ashcroftfl.  Walworth 1  Holmes 237,  238,  246 

Ashton  Valve  Co.  v.  Muffler  Co 8  U.  S.  App 155 

Asmusfl.  Alden 27  Fed.  Rep 25 

Asmus  v.  Freeman 34  Fed.  Rep 427,  430 

Aspinwall  Mfg.  Co.  v.  Gill 33  Fed.  Ref> 236,  241,  248 

Atkins  v.  Park 61  Fed.  Rep 243 

Atlantic  Works  v.  Brady 107  U.  S 19,  22 

Atlantic  Giant  Powder  Co.  v.  Ditt- 

mar  Powder  Mfg.  Co 9  Fed.  Rep 538 

Atlantic    Giant    Powder    Co.   v. 

Goodyear 3  Bann.  &  Ard 307,  518 

Atlantic    Giant    Powder    Co.   v. 

Mowbray 2  Bann.  &  Ard 307 

Attorney    General    v.    Rumford 

Chemical  Works..: 2  Bann.  &  Ard 275 

Atwood  v.  Portland  Co 10  Fed.  Rep 208,  347 

Avery®.  Wilson 20  Fed.  Rep 328 

Babcock  v.  Clarkson 63  Fed.  Rep 375 

Babcock  v.  Degener 1  Me  Arthur's  Patent  Cases 79,  396 

Babcock  &  Wilcox  Co.  v.  Pioneer 

Iron  Works 34  Fed.  Rep 42 

Badische  Anilin  &  Soda  Fabrik  v. 

Cummins 4  Bann.  &  Ard 68 

Badische  Anilin  &  Soda  Fabrik  «. 

Hamilton  Mfg  Co 3  Bann.  &  Ard 145 

Bagley  &  Sewall  Co.  «.  Wood 

Pulp  Co 58  Fed.  Rep 34 

Bailey  v.  Bussing 28  Connecticut 403 

Bailey  Wringing  Machine  Co.  ®. 

Adams 3  Bann.  &  Ard 517 

Baker®.  Whiting 1  Story. 490 

Baker  Mfg.  Co.  v.  Washburn  & 

MoenMfg.  Co 18  Fed.  Rep 259 

Baldwin,®.  Bernard 5  Fisher 523 

Baldwin  v.  Sibley 1  Clifford 260 

Ball®.  Langles 102  U.  S 200 

Ball  Glove  Fastening  Co.  v  Socket 

Fastener  Co 53  Fed.  Rep 561 

Ballard  v.  McClusky 58  Fed.  Rep 187 

Ballard®.  Pittsburg 12  Fed.  Rep 5,  81,  534 


TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Ballard®.  Searls 130  U.  S 493 

Baltimore  Car- Wheel  Co.  ®.Bemis.29  Fed.  Rep 449 

Baltimore  &  Potomac  Railroad 

Co.  v.  Fifth  Baptist  Church..  .108  U.  8 333 

Bancroft  ®.  Acton 7  Blatch 442 

Bank  of  Augusta  v.  Earle 13  Peters 317 

Bank' of  Orleans  ®,  Skinner 9  Paige 447 

Bank  of  United  States  ®.  Daniel... .12  Peters 471 

Bantz®.  Frantz 105  U.  S 203 

Barbed  Wire  Patent 143  U.  S 24,  44,  64,  69,  70,  163 

Barker  ®.  Shoots .'. 18  Fed.  Rep 484 

Barker®.  Stowe 15  Blatch 462 

Barker  ®.  Stowe 4  Bann.  &  Ard 489 

Barnard®.  Gibson 7  Howard 534 

Barnes  Sprinkler  Co.  ®.  Walworth 

1    Mfg.  Co 51  Fed.  Rep 57,  480 

Barnes  Co.  «.  Sprinkler  Walworth 

Co 60  Fed.  Rep 57 

Barney®.  Peck 16  Fed.  Rep.... 340 

Barrett*.  Hall 1  Mason 50,  386 

Barron  v.  Baltimore 7  Peters 131,  138 

Barry®.  Mfg.  Co 22  Fed.  Rep 263 

Bartlett®.  Holbrook 1  Gray 257 

Bate  Refrigerating  Co.  v.  Eastman. 11  Fed.  Rep 540 

Bate  Refrigerating  Co.  v.  Eastman.  24  Fed.  Rep 171 

Bate  Refrigerating  Co.  ®.  Gillett  ...13  Fed.  Rep 143 

Bate  Refrigerating  Co.  ®.  Gillett.. ..20  Fed.  Rep 144 

Bate  Refrigerating  Co.  v.  Gillett.... 24  Fed.  Rep 538 

Bate  Refrigerating  Co.  ®.  Gillett.... 28  Fed.  Rep 559 

Bate  Refrigerating  Co.  v.  Gillett. ...30  Fed.  Rep 331,  538,  539 

Bate  Refrigerating  Co.  v.  Gillett. .  .31  Fed.  Rep 310 

Bate   Refrigerating  Co.  ®.  Ham- 
mond  129  U.  S 144,  145 

Bate   Refrigerating  Co.  ®.  Sulz- 

berger 157  U.  S 143 

Bates®  Coe 98  U.  S 61,  340.461 

Bates®.  Railroad  Co 32  Fed.  Rep 430 

Bath  v.  Caton 37  Michigan 336 

Battin®.  Taggert 17  Howard 68,  80,  90,  92,  160, 

198,  209 

Beach®.  Box  Machine  Co 63  Fed.  Rep 24,62,  118,200 

300,  303,  366 

Bean  ®.  Smallwood 2  Story 42 

Beane®.  Orr 2  Bann.  &  Ard 519 

Bedford  ®.  Hunt 1  Mason 66,  73 

Beecher    Mfg.    Co.    ®.    Atwater 

Mfg.  Co 114  U.  S 33 


TABLE    OF    CITED    CASES.  XXXV11 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Beedle  ®.  Bennett 122  U.  S 81,  85,  455 

Belding®.  Turner 8  Blatch 260 

Bell  v.  Daniels I  Bond 92 

Bella.  Daniels 1  Fisher 72.  122 

Bell  v.  Hearne 19  Howard 151 

Bell  ®.  Stamping  Co 32  Fed.  Rep 431,  559 

Bellas  v.  Hays 5  Sargeant  &  Rawle 392 

Bene®  Jeantet 129  U.  S 159 

Bennet  ®.  Fowler 8  Wallace 404 

Berry  ®.  Stockwell 9  Off.  Gaz 120 

Bevin  ®.  Bell  Co 9  Blatch 124 

Bicknell®.  Todd 5  McLean 252 

Bierce®   Stocking 11  Gray 387 

Bigelow  v.  Louisville 3  Fisher 256 

Bignall  ®.  Harvey 5  Bann.  &  Ard 69 

Bignall  ®.  Harvey 18  Blatch 347,  532 

Birdsall  ®.  Coolidge 93  U.  S 347,  430.  436 

Birdsall  ®.  McDonald 1  Bann.  &  Ard 81,  92 

Birdsall  ®.  Mfg.  Co 2  Bann.  &  Ard 538 

Birdsall  ®  Mfg.  Co 1  Hughes 536 

Birdsall  ®.  Perego 5  Blatch 257 

Blrdsell  «.  Shaliol 112  U.  S 265,  487 

Bischoff®.  Wethered 9  Wallace 68,  396 

Black  0.  Hubbard 3  Bann.  &  Ard 226 

Black  v.  Munson 14  Blatch 427,  428 

Black®.  Stone 33  Alabama 237 

Black  ®.  Thorn 10  Blatch 320 

Black  Diamond  Coal  Co.  ®  Excel- 
sior Coal  Co 156  U.  S 163,  296 

Blades®.  Rand 27  Fed.  Rep 162,  164 

Blagrove  v.  Ringgold 2  Cranch's  Circuit  Court  Reports.  419 

Blair®.  Lippincott  Glass  Co 52  Fed.  Rep 325 

Blake®.  Robertson 94  U.  S 300,  550 

Blake®.  San  Francisco .' 113  U.  S 42 

Blanchard  ®.  Beers 2  Blatch 310 

Blanchard  ®.  Eldridge 1  Wallace,  Jr 325 

Blanchard  ®.  Putnam 8  Wallace 405,  421 

Blanchard  ®.  Reeves 1  Fisher 291,  515 

Blanchard®.  Sprague 1  Cliff. 262 

Blanchard's  Gun-Stock  Turning 

Factory  ®.  Warner 1  Blatch 218 

Blandy  ®.  Griffith 3  Fisher 47,  124,  464 

Blandy  ®.  Griffith 6  Fisher 489,  490 

Blessing  ®.  Copper  Works 34  Fed.  Rep 350,  460 

Bliss  ®.  Brooklyn 8  Blatch 215 

Bliss®.  Brooklyn 10  Blatch 71 


XXXV111  TABLE    OF    CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Bliss  v.  Brooklyn 4  Fisher 327 

Bliss®.  Haight 3  Fisher 298 

Bliss  v.  Merrill 33  Fed.  Rep 54 

Bloomer  ®.  Gilpin 4  Fisher 261 

Bloomer®.  McQuewan 14  Howard.. .136,  173,  217,  218,  226.  254 

Blount  v.  Societe 53  Fed.  Rep 509,  511,  532 

Blumenthal  «.  Burrell 43  Fed  Rep 29 

Board  of  Commissioners  ®.  Gor- 
man  19  Wallace 495 

Boesch  ®.  Graff 133  U.  S 231,  244,431,432,497,563 

Bogart®.  Hinds 25  Fed.  Rep 325,  351 

Bolton  v.  Commissioner  of  Patents. 61  Off.  Gaz 5 

Bousack  Machine  Co.  ®.  Cigarette 

Co 64  Fed.  Rep 540 

Bonsack  Machine  Co.  ®.  Elliott. ....63  Fed. Rep 4,  5 

Bonsack  Machine  Co.  v.  Hulse 57  Fed  Rep 241 

Boomer  v.  Powder  Press  Co 13  Blatch 533 

Booth  v.  Severs 19  Off.  Gaz 265 

Bottle  Seal  Co. ®.  De  La  Vergne  Co.47  Fed.  Rep 460 

Boston  Electric  Co.  ®.  Holtzer 41  Fed.  Rep 516 

Boston  Iron  Co.  v.  King 2  Gushing 567 

Boston  Lasting  Machine  Co.  ®. 

Woodward 53  Fed.  Rep 34.  167,  301 

Boston  Woven  Hose  Co.  v.  Starr 

Rubber  Co 40  Fed.  Rep 334 

Bourne®.  Goodyear 9  Wallace 275 

Bowers®.  Von  Schmidt 63  Fed.  Rep 32,  57,  66,  158,  303 

Bowker®.  Dows 3  Bann.  &  Ard 381 

Bowman®.  DeGraw 60  Fed.  Rep 69 

Boyd  ®.  Cherry 50  Fed.  Rep 5,  331 

Boyd®.  Janesville  Hay  Tool  Co....l58U.  S 302 

Boyd  ®.  McAlpin 3  McLean 237,  516 

Boyden  ®.  Burke 14  Howard 174 

Braddock  Glass  Co.  ®.  Macbeth.... 64  Fed.  Rep 542 

Bradford®.  Bradford 5  Connecticut 374 

Bradley  «.  Dull 19  Fed.  Rep 247 

Bradley  &  Hubbard  Mfg.  Co.  ®. 

Charles  Parker  Co 17  Fed.  Rep 519 

Bradley  Mfg.  Co.  ®.  Eagle  Mfg.  Co.  57  Fed.  Rep 373,  374,  446 

Bradley  Mfg.  Co.  v.  Eagle  Mfg.  Co.58  Fed.  Rep 470 

Bragg  Mfg.  Co.  v.  Hartford 56  Fed.  Rep 455,  456 

Bragg  v.  Stockton 27  Fed.  Rep 443 

Brainard  ®.  Cramme 12  Fed.  Rep 4,  186,  210 

Brammer  «.  Jones 3  Fisher 525 

Bray®.  Denning 56  Fed.  Rep 330 

Bray®.  Hartshorn 1  Cliff. 410 


TABLE    OF    CITED    CASES.  XXXIX 

Names  of  Cases.  Where  icported.  Pages  in  this  book. 

Brickill  v.  Baltimore 50  Fed.  Rep 34 

Brickill®.  Baltimore 60  Fed.  Rep 424,  42(5,  432 

Brickill  v.  Hartford 49  Fed.  Rep 34,  368,  375,  464,  470 

Brickill  v.  Hartford 57  Fed.  Rep.. .38,  300,  364.  365,  377,  460 

Brickill®.  New  York 5  Barm.  <fc  Ard 140 

Bridgeport  Wood  Finishing  Co. 

v.  Hooper 5  Fed.  Rep 61 

Brig  Struggle  v.  United  States 9  Cranch 278 

Briggs®.  Central  Ice  Co 54  Fed.  Rep 387 

Brinkerhoff «.  Aloe 146  U.  S 33 

Britton®.  White  Mfg.  Co 61  Fed.  Rep 54,  55,  102,  364,  393 

Broadnax  <o.  Transit  Co 5  Bann.  &  Ard....: 208 

Bromley  Bros.'  Carpet  Co.  ®. 

Stewart 51  Fed.  Rep 24 

Bronson  v.  Kinzie 1  Howard 131 

Brooks  v.  Ashburn 9  Georgia A 329 

Brooks  ®.  Bicknell 3  McLean .224,  383,  525 

Brooks®.  Byam 2  Story 237,  255,  261 

Brooks  ®.  Fiske 15  Howard 156,  295 

Brooks  v.  Jenkins 3 McLean.. ..183,  185,  225,  247.  392.  403 

Brooks®.  Miller 28  Fed  Rep 455 

Brooks  ®.  Norcross 2  Fisher 53 

Brown®.  Davis 116  U.  S 296,  299 

Brown®.  Deere 6  Fed.  Rep 534 

Brown®.  District  of  Columbia 130  U.  S 33,  26 

Brown®.  District  of  Columbia 3  Mac  key  330 

Brown®.  Duchesne 19  Howard 129,  130,  141 

Brown  ®.  Hall 6  Blatch 462 

Brown  ®.  Jackson 3  Wheaton 238 

Brown®.  Lapham 27  Fed.  Rep .-.. 259 

Brown®.  Piper 91  LT.  S 41,  390,  460,  498 

Brown  ®.  Shannon '. 20  Howard 315 

Brown  Mfg.  Co.  ®.  Bradley  Mfg. 

Co 51  Fed.  Rep 156 

Brown  Mfg.  Co.  ®.  Deere 21  Fed.  Rep 25 

Brown  Mfg.  Co  ®.  Deere 51  Fed.  Rep 488 

Brown  Mfg.  Co.  ®.  Mast 53  Fed.  Rep 43,479 

Browning  ®.  Telephone  Co 61  Fed.  Rep 42 

Bruise  ®.  Peck 54  Fed.  Rep 373 

Brunner's  Appeal 1  Off.  Gaz Ill 

Brush  ®.  Condit 132  U.  S 66,  299 

Brush  Electric  Co.  ®.  Accumulator 

Co 47  Fed.  Rep 27.  145,  187,  287 

Brush  Electric  Co.  ®.  Accumulator 

Co 50  Fed.  Rep 525 

Brush  Electric  Co.  ®.  California 

Electric  Light  Co 52  Fed.  Rep.239,  251,  255,  258,  261,326 


x  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  In  this  book. 

Brush  Electric  Co.    «.    Electric 

Imp.  Co 52  Fed.  Rep 101,  167,  303 

Brush  Electric  Co.  v.  Electric  Co. 

of  San  Jose 49  Fed.  Rep 326 

Brush  Electric  Co.  v.  Electric  Co. 

of  San  Jose 51  Fed.  Rep 496 

Brush  Electric  Co.  v.  Ft.  Wayne 

Electric  Co 44  Fed.  Rep 78.101,  177,303 

Brush  Electric  Co.  v.  Julien  Elec- 
tric Co 41   Fed.   Rep 27,  145,287 

Brush  Electric  Co.  v.  Storage  Bat- 
tery Co 64  Fed.  Rep 515,  516,  520,  521 

Brush    Electric  Co.   v.   Western 

Electric  Co 43  Fed.  Rep 101,303 

Brush-Swan  Electric  Light  Co. 

v.  Electric  Co 48  Fed.  Rep 326 

Buckingham  v.  Iron  Co 51  Fed.  Rep 42 

Buerk  v.  Imhaeuser 2  Bann.  &  Ard 540 

Buffington's  Iron  Building  Co.  v. 

Eustis 65  Fed.  Rep 156,287 

Bull  u.Pratt 1  Connecticut 260 

Bullock   Printing   Press  Co.  v. 

Jones 3  Bann.  &  Ard 534 

BundyMfg.  Co.  v.  Columbian  Co... 59  Fed.  Rep 164 

Bundy  Mfg.  Co.  v.  Time  Recorder 

Co 64  Fed.  Rep 302 

Bunker  v.  Stevens 26  Fed.  Rep 415 

Burdell  t>.  Comstock 15  Fed.  Rep 456 

Burdell  «.  Denig 92  U.  S 256,  347,  388,  402 

Burden  «.  Corning 2  Fisher 183,464 

Burdett  «.  Estey...: 5  Bann.  &  Ard 184 

Burdett  v.  Estey 15  Blatch 186 

Burdett  v.  Estey 3  Fed.  Rep 148,558 

Burdsall  v.  Curran 31   Fed.  Rep 375 

Burney  v.  Goodyear 11   Gushing 211 

Burns  «.  Myer 100  U   S 170 

Burrfl.  Duryea 1  Wallace 201.292,  298,  300 

Burr  v.  Duryea 2  Fisher 257,  259 

Burr  v.  Ford 70  Off.  Gaz 121 

Burrall  v.  Jewett 2  Paige 71 

Burrell  v.  Hackley 35  Fed.  Rep 204,453 

Burt  v.  Evory 133  U.  S 19,  38,  62 

Busell  Trimmer  Co.  v.  Stevens 137  U.  S 42 

Busell  Trimmer  Co.  v.  Stevens 28  Fed.  Rep 42 

Buss*>.  Putney 38  N.  H 255 

Bussard  v.  Catalino 2  Cranch's  Circuit  Court  Reports  417 


TABLE   OF   CITED   CASES.  x 

Names  of  Cases.  Where  reported  Pages  in  this  book. 

Busseyo.  Mfg.  Co 110  U.  S...., 33 

Butlers.  Bainbridge 29  Fed.  Rep 367,  397 

Butler  v.  Steckel 137  U.  S 23,26 

Butter-worth  v.  Hill 114  U.   S 113 

Butterworth  v.  Hoe 112  U.  S 110,  114 

Button  Fastener  Co.  v.  Lucas 28  Fed.  Rep 51 

Butz  Thermo-Electric  Co.  v.  Elec- 
tric Co 36  Fed.  Rep 301,302 

Buzzellfl.  Fifleld 7  Fed.   Rep 26 

Byamv.  Eddy 2  Blatch 306 

Byam  v.  Farr 1   Curtis 308 

Cahill  v.  Brown 3  Bann.  &  Ard 55 

Cahoon  v.  Ring 1  Cliff 57,  300,  387 

Cahoone  Mfg.  Co.  v.  Harness  Co.. ..45  Fed.  Rep 19,  42,  328,  334 

Caldwell  ».  Jackson 7  Cranch 416 

Caldwell  v.  Waters 4  Cranch's  Circuit  Court  Reports.  527 

California  Electric  Works  v.  Fink. 47  Fed.  Rep 469 

California  Electrical  Works  •». 

Henzel 48  Fed.  Rep 515,  534 

California  Paving  Co.  •».  Molitor....U3  U.  S 499,  540 

Calkins  v.  Oshkosh  Carriage  Co.. ..27  Fed.  Rep 23 

Callaghan  v.  Myers 128  U.  S 545,  549.  566 

Cammack  «.  Johnson 2  New  Jersey  Equity 527 

Cammeyer  v.  Newton 94  U.  S 130,  136 

Campbell  0.  Bailey 45  Fed  Rep 34,  62 

Campbell  v.  Day 16  Vermont 236 

Campbells  Haverhill 155  U.  S 338,  376,473 

Campbell  v.  New  York 35  Fed.  Rep 83,  108,  488.  491 

Campbell  v.  New  York 36  Fed.  Rep 87 

Campbell  v.  New  York 47  Fed.  Rep 86 

Campbells.  Ward 12  Fed.  Rep 455 

Campbell  Printing  Press  Co  v. 

Manhattan  Ry.  Co 49  Fed.  Rep 134,478 

Campbell  Printing  Press  Co.  v. 

Marden 64  Fed.  Rep. ...62,  70,  100.  158,  164,  166 

Cananfl.  Mfg.  Co 23  Fed.  Rep 145 

Cansler  v.  Eaton 2  Jones'  Equity  Cases 239 

Canter  v.  Insurance  Companies 3  Peters 418 

Canton  Steel  Roofing  Co.  «.  Ean- 

neberg 51  Fed.  Rep 445 

Cantrellfl.  Wallick 117  U.  S 14.  15,  61,  69,  300 

Carew  v.  Fabric  Co 1  Holmes 212 

Carey  v.  Miller 34  Fed.  Rep 516 

Carltont).  Bokee 17  Wallace 158  167.  368 

Carnick  v.  McKesson 8  Fed.  Rep 461,463 

Carpenter  Machine  Co.  v.  8earle....52  Fed.  Rep 207 


xlii  TABLE   OF   CITED   CA^ES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Carr®.  Rice 1  Fisher 155,  215,  294 

Carroll®.  Morse 9  Off.  Gaz 214 

Carsteadt  ®.  Corset  Co 13  Blatch 542 

Carter®.  Baker 4  Fisher 433,  434 

Carter  ®.  Baker 1  Sawyer 309,  387 

Carter®.  Fry 54  Fed.  Rep 517 

Carter®.  Wollschlaeger 53  Fed.  Rep 70,  508  511,  522 

Carter  Grume  Co.  ®.  Ashley 68  Fed.  Rep 511,  516,  519 

Cartridge  Co.  ®.  Cartridge  Co 112  U.  S 179,  308 

Carver  v.  Hyde 16  Peters 156 

Carver®.  Mfg.  Co 2  Story 97.338 

Gary  ®.  Lovell  Mfg.  Co 31  Fed.  Rep 478 

Gary®.  Mfg.  Co 31  Fed.  Rep 479 

Gary  v.  Spring  Bed  Co 26  Fed.  Rep 528 

Cary  ®.  Wolff 24  Fed.  Rep 43 

Case®.  Brown 2  Wallace 163,  296 

Case  ®.  Morey 1  New  Hampshire 231 

Case®.  Redfield 4  McLean 237 

Castle®.  Hutchinson 25  Fed.  Rep 135 

Catlin  ®.  Insurance  Co 1  Sumner 355 

Caverly  ®.  Deere 52  Fed.  Rep 29,  70 

Cawood  Patent 94  U.  S 55,  289,  486,  553,  554,  561 

Celluloid  Mfg.  Co.  ®.  American 

Zylonite  Co 35  Fed.  Rep 27 

Celluloid  Mfg.  Co.  ®.  Arlington 

Mfg.  Co 44  Fed.  Rep 301 

Celluloid  Mfg.  Co.  ®.  Cellonite 

Mfg.  Co 40  Fed.  Rep 555.560,  563,  564 

Celluloid  Mfg.  Co.  v.  Cellonite 

Mfg.  Co 42  Fed.  Rep 167 

Celluloid  Mfg.  Co.  ®.  Chandler 27  Fed.  Rep 416 

Celluloid  Mfg.  Co.  ®.  Chrolithion 

Collar  &  Cuff  Co 23  Fed.  Rep 25 

Celluloid  Mfg.  Co.  ®.  Crane 

Chemical  Co 36  Fed.  Rep 27 

Celluloid  Mfg.  Co.®.  Crofut 24  Fed.  Rep 80 

Celluloid  Mfg.  Co.  ®.  Eastman 

Dry  Plate  Co 42  Fed.  Rep 516 

Celluloid  Mfg.  Co.®.  Mfg.  Co 34  Fed.  Rep 516 

Celluloid  Mfg.  Co.®.  Noyes 25  Fed.  Rep 42 

Celluloid  Mfg.  Co.®  Russell 37  Fed.  Rep 153,  367 

Celluloid  Mfg.  Co.®.  Tower 26  Fed.  Rep 37,  479 

Celluloid  Mfg.  Co.®.  Vulcanite  Co.  13  Blatch 448 

Celluloid  Mfg.  Co.®.  Zylonite  Co...  27  Fed.  Rep 205 

Celluloid  Mfg.  Co.  ®.  Zylonite  Co. ..30  Fed.  Rep 23,  331 


TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Celluloid  Mfg.  Co.  v.  Zylonite  Co. ..31  Fed.  Rep 5 

Celluloid  Mfg.  Cc.v.  Zylonite  Co... 34  Fed.  Rep 348 

Chaffee®.  Belting  Co 22  Howard 226,  254 

Chambers  •».  Smith 5  Fisher 253,  255,  261 

Chandler  v.  Ladd 1  MoArthur's  Patent  Cases 19 

Chase®.  Fillebrown 58  Fed.  Rep 55,62,  367,383 

Chase  ».  Turtle 27  Fed.  Rep 449 

Chase  v.  Walker 8  Fisher 235 

Cheever  v.  Wilson 9  Wallace 405 

Chicago  Fruit  House  Co.  rc.Busch.  2  Bissell 309 

Chicopee  Folding  Box  Co.  v. 

Rogers 32  Fed.  Rep 271 

Child  «.  Adams 1  Fisher  .-. 104 

Child  v.  Iron  works 19  Fed.  Rep 425,442 

Christman  v.  Rumsey 17  Blatch 186 

Cincinnati  Ice  Machine  Co.  v. 

Brewing  Co 31  Fed.  Rep '. 289 

City  of  Concord  0.  Norton 16  Fed.  Rep 372 

Clark  v.  Wilson 30  Fed.  Rep 302 

Clark  t>.  Wooster 119  U.  S 383,  425,  455,  456 

Clark  Thread  Co.  v.  Willimantic 

Linen  Co 140  U.  S 63,  65,  70 

Clinton  Wire  cloth  Co.  v.  Wire 

Cloth  Co 65  Fed.  Rep , 62 

Clodfelter  v.  Cox 1  Sneed 236 

Clough  v.  Mfg.  Co 106  U.  S 300 

Clow  «.  Barker 36  Fed.  Rep 271,484 

duett  v.  Claflin 140  U.  S 23 

Cluett  v.  Claflin 30  Fed.  Rep 23 

Cluin  v.  Brewer 2  Curtis 224,  248,  507,  514,  515,  517 

Coburn  v.  Clark 15  Fed.  Rep 515 

Cochrane  v.  Badische  Anilin  & 

Soda  Fabrik Ill  U.  S 68 

Cochrane  t».  Deener 94  U.  S 4,5,63,  286,294  299,300, 

313,  457,  499 

Cochrane  v.  Waterman 1  McArthur's  Patent  Cases 14,  37, 

122 

COQSV.  Collins  Co 9  Fed.  Rep 167 

Coffee  t>.  Guerrant 68  Off.  Gaz 65 

Coffin  v.  Ogden 18  Wallace 66,  69 

Cohansey  Mfg.  Co.  v.  Wharton 28  Fed.  Rep 69 

Cohn«.  Rubber  Co 3  Bann.  &  Ard 259 

Colemanfl.  Grubb •. 23  Penn.  State 234 

Colgate  v.  Compagnie  Fran- 

caise 23  Fed.  Rep 385 

Colgate  v.  Gold  &  Stock  Tele- 
graph Co 16  Blatch 523 


TABLE  OF  CITED   CASES. 
Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Colgate  *.   Gold  &  Stock  Tele- 
graph  Co 4  Baun.  &  Ard 522 

Colgate  v.  Telegraph  Co 19  Fed.   Rep 490 

Colgate  0.  Mfg.    Co 28  Fed.  Rep 429 

Colgate  v.   Ocean  Telegraph  Co.  .17  Blatch 141 

Collar  Co  ®.  Van  Dusen 23  Wallace 200 

Collignon  v.  Hayes 8  Fed.   Rep 520,  521 

Collins  v.  Hathaway Olcott's  Reports 419 

Collins  Chemical  Co.  v.  Capitol 

City  Mfg.  Co 42  Fed.   Rep 470 

Colt*.  Arms  Co 1  Fisher 288 

Colt  ®.  Young 2  Blatch 225,  522 

Columbus  Watch  Co.®.  Robbins...l48  U.  S 496 

Columbus  Watch  Co.  ®.  Robbins...64  Fed.  Rep 167,487 

Combined  Can  Co.  ®.  Lloyd 11   Fed.  Rep 33 

Commercial    Mfg.    Co.  ®.    Fair- 
bank  Co 135  U.    S 143.  145 

Commercial    Mfg.    Co.   ®.   Fair- 
bank  Co 27  Fed.   Rep 143 

Commissioners  of  Hamilton  Coun- 
ty ®.  Mighels 7.Ohio  State 327 

Commissioner  of  Patents  «.White- 

ly 4  Wallace 110,  111,  213 

Comstock  ®.  Sandusky  Seat  Co.  ...3  Bann.  &  Ard 87.  92 

Cone®.  Morgan  Envelope  Co 4  Bann.   &  Ard 40 

Conover®.  Mers 3  Fisher 522 

Conover  ®.  Mevs 11  Blatch 555 

Conover  ®.  Rapp 4  Fisher 387 

Conover®.  Roach 4  Fisher 72,  298,  387 

Consolidated  Apparatus    Co.    ®. 

Brewing  Co 28  Fed.  Rep 507 

Consolidated    Apparatus  Co.    ®. 

Brewing  Co 60  Fed.   Rep 42 

Consolidated   Apparatus  Co.    ®. 

Woerle 29  Fed.  Rep 397 

Consolidated  Brake  Shoe  Co  ®. 

Detroit  Spring  Co 47  Fed.  Rep 350 

Consolidated   Brake  Shoe  Co.  ®. 

Detroit  Spring  Co 59  Fed.  Rep 118 

Consolidated  Cable  Co.  ®.  Pacific 

Railway  Co 58  Fed.  Rep 487 

Consolidated  Electric  Light  Co. 

*.  Edison  Electric  Light  Co.  ...25  Fed.  Rep 148,229 

Consolidated  Electric   Light  Co. 

®.  Electric  Light  Co 20  Fed.  Rep 340 


TABLE  OF  CITED   CASES.  xv 

Names,  of  Cases.  Where  reported.  Paces  in  this  book. 

Consolidated  Electric  Light  Co. 

t>.  McKeesport  Light  Co 34  Fed.  Rep 148 

Consolidated  Electric  Light  Co . 

v.  McKeesport  Light  Co 40  Fed.  Rep 366 

Consolidated  Electric  Storage  Co. 

v.   Accumulator  Co 55   Fed.  Rep... 532 

Consolidated    Fruit    Jar    Co.    v. 

Stamping  Co 27  Fed.  Rep 7»,  82 

Consolidated    Fruit    Jar  Co.    ®. 

Stamping  Co 28  Fed.   Rep 23 

Consolidated    Fruit    Jar    Co.   v. 

Whitney 1  Bann.  &  Ard 261,  525 

Consolidated    Fruit    Jar    Co.   «. 

Whitney 2  Bann.  &  Ard 242,  255,  373 

Consolidated    Fruit    Jar    Co.   v. 

Wright 94  U.  S 79,  80,  83,  84,  86,  130 

Consolidated  Oil  Well  Packer  Co. 

®.  Eaton 12  Fed.  Rep '. 322 

Consolidated  Purifier  Co.  v.  Guil- 
der  9  Fed.  Rep 375 

Consolidated  Purifier  Co.  v.  Wolf.  .28  Fed.  Rep 258,  259 

Consolidated  Roller  Mill  Co.  v. 

Barnard  &  Leas  Mfg.  Co 43  Fed.  Rep 478 

Consolidated   Roller  Mill  Co.  ®. 

Coombs 39  Fed.  Rep 61,  134,  170,295 

Consolidated  Roller  Mill  Co.  v. 

Richmond  Mill  Works 40  Fed.  Rep 524 

Consolidated  Roller  Mill  Co.  v. 

Walker 138  U.  S 23,  144,  164,  166 

Consolidated  Valve  Co.  v.  Valve 

Co 113  U.  S 154 

Consumers  Gas  Co.  v.  Electric  Co .  50  Fed.  Rep 258 

Continental  Store  Service  Co.  v. 

Clark 100  N.  Y 314 

Continental  Windmill  Co.  «.  Em- 
pire Windmill  Co 8  Blatch 237.  240,  256 

Converse®  Matthews 58  Fed.  Rep 67 

Cook  v.  Bidwell 8  Fed.  Rep 241 

Coon  v.  Wilson 113  U.  S 197,  201,  203 

Coop®.  Physical  Institute 47  Fed.  Rep 350,446 

Coop  v.  Physical  Institute 48  Fed.  Rep 446 

Cooper®.  Mattheys 3  Penn.  Law  Journal  Reports.  504.  517 

Corbin  Cabinet  Lock  Co.  v.  Eagle 

Lock  Co 150  U.  S 161,  172,207 

Corbin  Lock  Co.  «.  Eagle  Lock  Co.37  Fed.  Rep 25 


xlvi    '  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Corbin  Lock  Co.  ®.  Yale  &  Towne 

Mfg.  Co..., 58  Fed.  Rep 375,  511 

Comely  ®.  Marckwald 131  U.  S 428,  431,  432 

Comely®.  Marckwald 32  Fed.  Rep 428 

Corning®.  Burden 15  Howard 4,  5,  156,  174,  405 

Corning    v.    Troy    Iron    &    Nail 

Factory 15  Howard 497,  498 

Corn-Planter  patent 23  Wallace 23,  56,  57,  67,  98,  164 

198,  209,  299 

Corser®.  Overall  Co 59  Fed.  Rep 507 

Coston®.  Pain 47  Fed.  Rep 23 

Cote  v.  Moffitt 15  Fed.  Rep 210,  409 

Cotter  ®.  Copper  Co 13  Fed.  Rep 287 

Cottier  v.  Stimson 18  Fed.  Rep 348 

Cottle  v.  Krementz 31  Fed.  Rep 68 

Coupe  v.  Royer 155  U.  S 71,  173,  409,  424,  432,  544 

Coupe  v.  Weatherhead 37  Fed.  Rep 488 

Covert®.  Curtis 25  Fed.  Rep 509 

Covert®.  Sargent 38  Fed.  Rep 265,426,  545 

Covert®.  Sargent 42  Fed.  Rep 442 

Cowing  ®.Rumsey 8  Blatch 347,  411,  424,  436 

Cox®.  Griggs 1  Bissell 387 

Cramer®.  Fry..... 68  Fed.  Rep -...328,  407 

Crandell  ®.  Piano  Mfg.  Co 24  Fed.  Rep 259 

Crary  ®.  Smith 2  Comstock 526 

Craver®.  Weyhrich 31  Fed.  Rep 80,  81 

Crawford  ®.  Heisinger 123  U.  S -...166,  171 

Creamer®.  Bowers 35  Fed.Rep.431,  432,  433,  438,  455,  546 

Crescent  Brewing  Co.  ®.  Gottfreid.128  U.  S 42,  165 

Crompton®.  Belknap  Mills 3  Fisher 103,  222 

Crompton  ®.  Knowles 7  Fed.  Rep 45 

Crosby  Valve  Co  ®.  Safety  Valve  . 

Co 141  U.  S 431,  544,  545,  551,  558 

Cross  ®»  Mackinnon .....11  Fed.  Rep 299 

Crouch  ®.  Roemer 103  U.  S 37 

Crowell  ®.  Parmeter 3  Bann.  &  Ard 520 

Cummings  v.  Plaster  Co 6  Blatch 417 

Curran  ®.  Arkansas 15  Howard 339 

Curran®.  Burdsall 20  Fed.  Rep 264 

Curran®.  Car  Co 32  Fed.  Rep 332,  449 

Curtis    ®.   Atlanta    Street    Rail- 
way Co  ...56  Fed.  Rep .N    70 

Curtis®.  Overman  Wheel  Co 58  Fed.  Rep 532 

Cutter  Co.  ®.  Sheldon 10  Blatch 237 

Cutting  ®.  Myers 4  Washington 351,  354 

C.  W.  Siemens'  Appeal 11  Off.  Gaz ..  206 


TABLE   OF   CITED    CASES.  xlvii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Dable  Grain  Shovel  Co.  v.  Flint.. ..137  U.  S 129,  137 

Dalby®.  Lynes 64  Fed  Rep 23.  67 

Dale®.  Rosevelt 1  Paige 374,  484 

Dalton  ®.  Nelson 13  Blatch 27 

Dalzell®.  DueberMfg.  Co 149  U.  S 230,  231,  241,  453 

Dare  ®.  Boylston 6  Fed.  Rep 258 

Davidson  v.  Lewis 1  McArthur's  Patent  Cases 66 

Davidson's  Ex'rs  v.  Johnson 16  New  Jersey  Equity 453 

Davis®.  Fredericks 19  Fed.  Rep 25 

Davis®.  Murphy 2  Rich 374 

Davis  v.  Palmer 2  Brock 44 

Davis  v.  Smith 19  Fed.  Rep 456 

Davis  Electrical  Works  v.  Edison 

Electric  Light  Co... 60  Fed.  Rep 254 

Davis  Wheel  Co.  ®.  Davis  Wagon 

Co 20  Fed.  Rep 237 

Dawes  v.  Taylor 14  Reporter 457 

Day®.  Car  Spring  Co 3  Blatch 362,  504 

Day  v.  Hartshorn 3  Fisher 518 

Day®.  Railroad  Co 132  U.  8 23 

Day  v.  Railroad  Co 23  Fed.  Rep 23 

Day®.  Rubber  Co 20  Howard 408 

Day®.  Stellman  1  Fisher 408 

Day  v.  Woodworth 13  Howard 414,  436,  438 

Dayton  Crupper  Co.  v.  Ruhl 55  Fed.  Rep 23.  461 

Dean  v.  Mason 20  Howard 497,  544 

Dedekam  ®.  Vose 3  Blatch 415,  419 

Dederick®.  Fox 56  Fed.  Rep 124,  162.  267,457 

Dederick®.  Seigmund 51  Fed.  Rep 167,  300,  302 

Deering    ®.    Winona    Harvester 

Works 155  U.  8 64,  70,  78,  99,  156 

DeFlorez®.  Reynolds 14  Blatch 103 

De  Florez  ®.  Reynolds 17  Blatch 146,  147,  401,  467 

Delamater  ®.  Deeley 53  Fed.  Rep 87 

Delamater®.  Reinhardt 43  Fed.  Rep 385 

Delamater  ®.  Heath 58  Fed.  Rep 84 

Delano  ®.  Scott Gilpin 328 

De  La  Vergne  Machine  Co.  ®. 

Featherstone 147  U.  S 119,  149,  246 

De  La  Vergne  Machine  Co.  ®. 

Featherstone 49  Fed.  Rep 372 

Delaware  Coal  &  Ice  Co.®.  Packard.  5  Bann.  &  Ard 162,  164 

Delaware  Telephone  Co.  ®.  Dela- 
ware  50  Fed.  Rep 135 

DeLoriea  ®.  Whitney 63  Fed.  Rep 407 

Delvin  ®.  Heise 43  Fed.  Rep 23 


xlviii  TABLE   OP  CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Dennis  ®.  Eddy 12  Blatch 417 

Densmore®.  Tanite  Co 32  Fed.  Rep 258 

Dental  Vulcanite  Co.  •».  Davis 102  U.  S 297 

Dental  Vulcanite  Co.  v.  Van  Ant- 
werp  2  Bann.  &  Ard 425 

Dental  Vulcanite  Co.  a.  Wetherbee.  2  Cliff 204,  211 

Derby  v.  Thompson 146  U.  S 68,  163,  296 

Detroit  Lubricator  Mfg.   Co.  v. 

Renchard 9  Fed.  Rep 57 

Detwiller  v.  Bosler 58  Fed.  Rep 488 

Detweiler  v.  Voege 8  Fed.  Rep 254 

Devlin®.  Paynter 64  Fed.  Rep 295 

De  Ver  Warner  •».  Bassett 7  Fed.  Rep 513 

DeWitt®.  Mfg.  Co 5  Hun 249 

Dexter  «.  Arnold 5  Mason 489,  494 

Dexter  v.  Arnold 2  Sumner 567 

Dey®.  Stellman 1  Fisher 256 

Dezell  t>.  Odell 3  Hill 263 

Diamond  Match  Co.  «.  Oshkosh 

Match  Works 63  Fed.  Rep 481 

Dibble  ».  Augur 7  Blatch 322 

Dick  v.  Struthers 25  Fed.  Rep 324,455 

Dick  v.  Supply  Co 25  Fed.  Rep 460 

Dickerson  «.  Colgrove 100  U.  8 372 

Dickerson  v.  Greene 53  Fed.  Rep .• 351 

Dickerson  v.  Machine  Co 35  Fed.  Rep 506,  507 

Dickerson  v.  Matheson 57  Fed.  Rep 244 

Dittmar  v.  Rix 1  Fed.  Rep 287 

Dixon-Woods  Co.  ».  Pfeifer 51  Fed.  Rep 479 

Dixon-Woods  Co.  «.  Pfeifer 55  Fed.  Rep 154 

Dobson®.  Cubley 149  U.  S 163,  296 

Dobson  v.  Dornan 118  U.  S 96, 102,  431,  550 

Dobson®.  Graham 49  Fed.  Rep 481 

Dobson  v.  Hartford  Carpet  Co 114  U.  S 102,  160,  550 

Dobson  v.  Lees 137  U.  S 199,  201,  399 

Dodge  v  Card 2  Fisher 514 

Donnell  v.  Insurance  Co 2  Sumner 567 

Dorlon®.  Guie 25  Fed.  Rep 62 

Dorman®.  Keefer 49  Fed.  Rep 120 

Dorsey  Harvester    Rake   Co.  v. 

Marsh 6  Fisher 523,  524,  534 

Dorsey  Rake  Co.  v.  Mfg.  Co 12  Blatch 250,  255 

Doubleday  v.  Roess 11  Fed.  Rep 33 

Doubleday  v.  Sherman 4  Fisher 542 

Doughty  v.  West 6  Blatch 274 

Doughty  ®.  West 2  Fisher 461,  507,  509 


TABLE    OF    CITED    GASES. 

/ 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Douglas  v.  Abraham 50  Fed.  Rep 172 

Dowell  0.  Mitchell 105  U.  S 455 

Downton  0.  Allis 9  Fed.  Rep ..232,  235 

Downton  0.  Mfg.  Co 9  Fed.  Rep 232 

Downton  0.  Milling  Co 108  U.  S 6,  55 

Doyle  v.  Spalding 19  Fed.  Rep 53 

Drainage  Construction  Co.  0. 

Chelsea 41  Fed.  Rep 263 

Drainage  Construction  Co.  0. 

Englewood  Sewer  Co 67  Fed.  Rep 460 

Draper  0.  Hudson 1  Holmes 533 

Draper  0.  Potomska  Miils 3  Bann.  &  Ard 57 

Draper  0.  Wattles 3  Bann.  &  Ard 87,  108 

Dreskill  0.  Parish 5  McLean 417 

Dreyfus  0.  Schneider 25  Fed.  Rep 69 

Dreyfus  v.  Searle 124  U.  S 42 

Dryfoos  v.  Friedman 18  Fed  Rep 309 

Dryfoos0.  Wiese 124  U.  S 298 

Du  Bois  v.  Kirk ...158  U.  S 24,  495,  533 

Duboise  0.  Railroad  Co 5  Fisher 372,373 

Dudley  E.  Jones  Co  0.  Munger 

Mfg.  Co 49  Fed.  Rep 101 

Dudley  E.  Jones  Co.  v.  Munger 

Mfg.  Co 50  Fed  Rep 486,  487 

Dueber  Watch  Case  Co.  v.  Dalzell.38  Fed.  Rep 237 

Duer  0.  Lock  Co 149  U.  S 23,  44,  45 

Duesh  v.  Medlar  Co 30  Fed.  Rep 34 

Duff*.  Pump  Co 107  U.  S 302 

Duffy  v.  Reynolds 24  Fed.  Rep 69 

Dukes  0.  Bauerle 41  Fed.  Rep 19,  102 

Dunbar  v.  Myers * 94  U.  S 34,  163,  185,  296,  372 

Dunham  0.  Dennison  Mfg  Co 154  U.  S 203 

Dunham  0.  Railroad  Co 7  Bissell 248,  256 

Dunlap0.  Schofield 152  U.  S 354,  371,  385,468 

Duponti  0  Mussy 4  Washington 450 

Durand  0  Schulz 61  Fed.  Rep 157 

Durham  0.  Seymour 71  Off.  Gaz 113,  114 

Dyer  v.  Rich 1  Metcalf 232,  238 

Dyson  0.  Danforth 4  Fisher 398 

Eachus  0  Broomall 115  U.  S 208.  372 

Eagle  Lock  Co.  0.  Corbin  Lock 

Co 64  Fed.    Rep 487 

Eagle  Mfg.  Co.  0.  Bradley  Mfg.  Co..50  Fed.  Hep 374 

Eagle  Mfg.  Co  0.  Miller 41   Fed.  Rep 374 

Eagle  Mfg   Co.  0.  Plow  Co 36  Fed.  Rep 523 


1  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Eagle    Pencil  Co.    v.   American 

Pencil  Co 53  Fed.  Rep 19 

Eagleton  Mfg.  Co.  v.  West  Mfg. 

Co Ill  U.S 118 

Eames  t>.  Andrews 122  U.   S 4,  55 

Eames  v.  Cook 2  Fisher 289 

Eames  v.  Godfrey 1  Wallace 163,  296,  298 

Earle  v.  Hall 22  Pickering 378 

Eastern  Paper  Bag  Co.  v.  Nixon... 35  Fed.  Rep 478.523 

Eastern   Paper  Bag  Co.  •».  Stan- 
dard Paper  Bag  Co 30  Fed.  Rep 5 

Eastmans.  Bodflsh 1   Story 355 

Eastman   v.  Hinckel 5  Bann.  <fc  Ard 308 

Eby®.  King 158  U.  S 201,  204 

Ecaubert  «.   Appleton 47  Fed.  Rep 463 

Ecaubertfl.  Appleton 67   Fed.  Rep 70,78,419,472,482 

Eclipse  Mfg.  Co.  v.  Adkins 36  Fed.  Rep 460 

Eclipse  Mfg.  Co.  v.  Adkins 44  Fed.  Rep 19 

Eclipse  Windmill  Co.  v.   Wind- 
mill Co 24  Fed.  Rep 261 

Economy  Heater  Co.  •».  Lamprey 

Protector  Co 65  Fed.  Rep 126 

Edison  Electric  Light  Co.  v.  Bea- 
con Electric  Co 54  Fed.  Rep 506,518 

Edison     Electric     Light    Co.    «. 

Bloomingdale 65  Fed.  Rep 478 

Edison  Electric  Light  Co.  «.  Bos- 
ton Lamp  Co ...62  Fed.  Rep 300 

Edison  Electric  Light  Co.  t>.  Buck- 
eye Electric  Co 59  Fed.  Rep 152,  528 

Edison  Electric  Light  Co.  v.  Elec- 
tric Mfg.  Co 57  Fed.  Rep 518 

Edison  Electric  Light  Co.  v.  Elec- 
tric   Supply  Co.  60  Fed.  Rep 401 

Edison  Electric  Light  Co.  v.  Elec- 
tric SupplyCo 66  Fed.  Rep 499 

Edison  Electric    Light  Co.  v. 

Equitable  Life  Co 55  Fed.  Rep 453,458,459 

Edison    Electric    Light    Co.    v. 

Goelet. 65  Fed.  Rep 254 

Edison  Electric  Light  Co.  •».  Mt. 

Morris  Electric  Light  Co 57  Fed.  Rep 134,458 

Edison  Electric  Light  Co.  •».  Mt. 

Morris  Electric  Light  Co 58  Fed.    Rep 522,524 

Edison  Electric  Light  Co.  «.  New 

Haven  Electric  Co 35  Fed.   Rep 241 


TABLE    OF   CITED    CASES.  11 

Names  of  Cases.  Where  reported.  Passes  in  this  book. 

Edison  Electric  Light  Co.  v.  Pack- 
ard Electric  Co 61  Fed.  Rep 334 

Edison  Electric  Light  Co.  v.  Per- 
kins Electric  Lamp  Co 42  Fed.  Rep 144 

Edison  Electric  Light  Co.  v.  Phil- 
adelphia Trust  Co 60  Fed.  Rep 287,  480,  508 

Edison    Electric    Light    Co.    ®. 

Sawyer-Man  Electric  Co 53  Fed.    Rep 134,522,  524 

Edison  Electric  Light  Co.  ®. 
United  States  Electric  Light- 
ing Co 35  Fed.  Rep 143 

Edison  Electric  Light  Co.  v. 
United  States  Electric  Light- 
ing Co 45  Fed.  Rep 484 

Edison  Electric  Light  Co.  v. 
United  States  Electric  Light- 
ing Co 47  Fed.  Rep 172 

Edison  Electric  Light  Co.  v. 
United  States  Electric  Light- 
ing Co 52  Fed  Rep 27,  29,46,  151,  154,164 

Edison  Electric  Light  Co.  •». 
United  States  Electric  Light- 
ing Co 59  Fed.  Rep 528 

Edison    Electric    Light    Co.    v. 

Waring  Electric  Co 59  Fed.  Rep 143 

Edison    Electric    Light    Co.    v. 

Westinghouse  Electric  Co 54  Fed.  Rep 540 

Edward  Barr  Co.  v.  Sprinkler  Co.. .32  Fed.  Rep 506,  514 

Egbert®.  Lippmann 104  U.    S 84,85 

Elastic  Fabrics  Co.  ».  Smith 100  U.  S 182,  418,  499 

Elder  «.   Bemis.. 2  Metcalf 343 

Electric  Gas  Co.  v.  Boston  Elec- 
tric Co 139  U.  S 201 

Electric  Gas  Lighting  Co.  v.  Fuller.  .59  Fed.  Rep 497 

Electric  Mfg.  Co.  v.  Edison  Elec- 
tric Light  Co 61  Fed.  Rep 518 

Electric  Ry.  Co.  v.  Jamaica  R.  R. 

Co 61  Fed.  Rep 25,  40 

Electric  Signal  Co.  v.  Hall  Signal 

Co 114  U.  S 293 

Electrical     Accumulator    Co.    v. 

Brush  Electric  Co 44  Fed.  Rep. 269 

Electrical     Accumulator    Co.    «. 

Brush  Electric  Co 52  Fed.  Rep 148,  179 

Electrical     Accumulator    Co.    v. 

Julien  Electric  Co 38   Fed.  Rep 35,44,54,59,177,180 


Hi  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book 

Electrical    Accumulator    Co.    v. 

Julien  Electric  Co 47  Fed  Rep 538 

Electrical    Accumulator    Co.    ®. 

New  York  &  Harlem  R.  Co.... 50  Fed.  Rep 195 

Elgin  Wind  Power  Co.  v.  Nichols.. .65  Fed.  Rep 253,  314,  316,  453 

Eliot  v.  Piersol 1  Peters 530 

Elizabeth  v.  Pavement  Co 97  U.  S 63.  84,  85,88,  265,  305,  330, 

544,  545,  547,  550,  558 

Ellithorp  v.  Robertson 4  Blatch 57 

Elmendorf  v.   Taylor 10  Wheaton 471 

Elm  City  Co.  v.  Wooster 6  Fisher 87 

Ely  v.  Mfg.  Co 4  Fisher 504,  522. 

Emack  «.  Kane 34  Fed.  Rep 449 

Emerson  «.  Hogg 2  Blatch 96,107 

Emerson  v.  Hubbard 34  Fed.  Rep 472 

Emerson  v.  Lippert 31  Fed.  Rep 143 

Emerson  v.  Simm 6Fisher 425,  437 

Emigh  v.  Chamberlin 2  Fisher, 260 

Emigh  «.  Railroad  Co 6  Fed.  Rep 428,  442,  546,  556,557 

Empire  State  Nail  Co. «.  American 

Button  Co 61  Fed.  Rep 508  514 

Empire  State  Nail  Co.  v.  Faulk- 
ner  55  Fed  Rep 238 

Enterprise  Mfg.  Co.  v.  Deisler 4(i  Fed.  Rep 478 

Enterprise  Mfg.  Co.  ».  Sargent 28  Fed.  Rep ...     37 

Enterprise  Mfg.  Co.  v.  Sargent 48  Fed.  Rep '..  540 

Enterprise  Mfg.  Co.  v.  Snow 67  Fed.  Rep , 351 

Erie  Railway  Co.  v.  Ramsay 45  New  York 530 

Estey  v.  Burdett 109  U.  8 29 

Eunson  ®.  Dodge 18  Wallace 226 

Evans  v.  Eaton 3  Wheaton 173,  362,  364,  394 

Evans  v.  Eaton 7  Wheaton 422 

Evans  v.  Hettich 7  Wheaton 407 

Evans  «.  Jordan 9  Cranch 217 

Everest  v.  Oil  Co 20  Fed.  Rep 69 

Everest*.  Oil  Co 22  Fed.  Rep 488 

Everett  ®.  Thatcher 3  Bann.  &  Ard 511 

Evory  •».  Burt 15  Fed.  Rep 300 

Ewart  Mfg.  Co.  ®.  Iron  Co 31  Fed.  Rep 303 

Ex  parte  Robinson 2  Bissell 135 

Ex  parte  Schollenberger 96  U.  S 317 


Facer®.  Midvale  Steel  Works  Co.  38  Fed.  Rep 534 

Falley  v.  Giles 2!)  Indiana 234 

Farley  v.  Steam  Gauge  Co 1  McArthur's  Patent  Cases 64 


TABLE   OF   CITED   CASES.  liii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Farmer's  Mfg.  Co.  v.  Corn  Planter 

Co 128  U.  8 203 

Farrington®.  Detroit 4  Fisher 227 

Farriugton  ®.  Gregory 4  Fisher 255 

Fassett®.  E wart  Mfg.  Co 58  Fed.  Rep 162 

Fassett®.  Ewart  Mfg.  Co 62  Fed.  Rep 162 

Faulks®.  Kamp 17  Blatch 239 

Fay®.  Cordesman 109  U.  S 157,  163,  296 

Featherstone  v.  Cycle  Co 53  Fed.  Rep 157.  330.  332 

Featherstone  v.  Cycle  Co 57  Fed.  Rep 201 

Fermentation  Co.  v.  Maus 122  U.  S 4,  5 

Ferrett  ®.  Atwill 1  Blatch 280,  281 

Fetter  ®.  Newhall 17  Fed.  Rep 233 

Field  v.  De  Comeau 116  U.  S 289 

Filley®.  Stove  Co 30  Fed.  Rep 185,  294 

Fischers  Hayes 6  Fed.  Rep 355,  385,  471 

Fischer  v.  Hayes 16  Fed.  Rep 563 

Fischer®.  Hayes 39  Fed.  Rep 546 

Fischer  v.  Neil 6  Fed.  Rep 230 

Fish  v.  Manning 31  Fed.  Rep 281 

Fisher  ®.  Amador  Mine 25  Fed.  Rep 265 

Fisk  Clark  &  Flagg  v.  Hollander...  Mac  Arthur  &  Mackay 160,  232 

Fitch®.  Bragg 16  Fed.  Rep 431 

Flint®.  Smoke  Burner  Co 38  Fed.  Rep 449 

Florsheim®.  Schilling 137  U.  S 26,  38,  62.  167 

Flower®.  Detroit 127  U.  S 207 

Fond  Du  Lac  County  ®.  May 137  U.  S 33,  42 

Foos  Mfg.  Co.  ®.  Thresher  Co 44  Fed.  Rep 23,  164 

Foote®.  Silsby 1  Blatch 365 

Foote®.  Stein 35  Fed.  Rep 489 

Forbes®.  Stove  Co 2  Cliff 212 

Forbush  ®  Bradford 1  Fisher 518,  523 

Forbush  ®.  Cook 2  Fisher 34,  99 

Forehand  ®.  Porter 15  Fed.  Rep 455 

Forgie®.  Oil  Well  Supply  Co 57  Fed.  Rep 42 

Forgie  ®.  Oil  Well  Supply  Co 58  Fed.  Rep 49 

Forncrook  ®.  Root 127  U.  S 298 

Forschner  ®.  Baumgarten '26  Fed.  Rep 26 

Fosdick  ®.  Lowell  Machine  Shop. ..58  Fed.  Rep 458 

Foss®.  Herbert 1  Bissell 288 

Foss  ®.  Herbert 2  Fisher 298 

Foster  ®.  Moore 1  Curtis 510,  525 

Foster®.  Crossin 23  Fed.  Rep 60,506,  513 

Foster®.  Crossin 44  Fed.  Rep 19,  42 

Fougeres  ®.  Murberger 44  Fed.  Rep 449,  460 

Fox  ®.  Perkins...  53  Fed.  Rep 44 


Hv  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Fraim®.  Iron  Co 27  Fed.  Rep 517 

Francis  ®.  Flinn 118  U.  S 449 

Freeman  ®.  Asmus 145  U.  S 161,  207 

Freese  •».  Swartchild 35  Fed.  Rep 386 

French  ®.  Carter 137  U.  S 29,  45 

French  v.  Carter 25  Fed.  Rep 23 

French  v.  Edwards 21  Wallace 412 

French  v.  Rogers 1  Fisher 146,  205 

Fry®.  Quinlan 13  Blatch 112 

Fry  v.  Yeaton 1  Cranch's  Circuit  Court  Reports.  416 

Fullers  Yentzer 94  U.  S ....163,  167,  296 

Gage®.  Herring 107  U.  S 181,  210,409 

Gage  v.  Kellogg 26  Fed.  Rep ' 488 

Gallahue®.  Butterfield 10  Blatch 209 

Galliher®.  Cadwell 145  U.  S 458 

Gamewell  Telegraph  Co.  v.  Brook- 
lyn  14  Fed.  Rep 251,  325 

Gamewell  Telegraph  Co.  v.  Chili- 

cotrhe 7  Fed.  Rep 340 

Gamewell  Telegraph  Co.  v.  Muni- 
cipal Signal  Co 61  Fed.  Rep 532 

Gandy  v.  Belting  Co 143  U.  S 24,  44,  76,  89,  350 

Gandy  v.  Belting  Co 28  Fed.  Rep 89 

Gandy®.  Marble 122  U.  S 114,  115 

Garretson®.  Clark Ill  U.  S 550 

Garretson  ®.  Clark 4  Bann.  &  Ard 559 

Gardner  v.  Herz 118  U.  S 19,  26 

Gardner  ®.  Howe 2  Cliff 141 

Gates  Iron  Works  v.  Fraser 153  U.  S 42 

Gates  Iron  Works  v.  Fraser 42  Fed  Rep 23,  40 

Gay®.  Cornell 1  Blatch 113,  229 

Gayler  v.  Wilder 10  Howard 59,  66,  229,  230,231, 

242,  250,  325 

Gear®.  Fitch 3  Bann.  &  Ard r 236 

Gear  v.  Grosvenor 1  Holmes 223 

Geis®.  Kimber 36  Fed.  Rep 331 

Gelpcke  «.  Dubuque 1  Wallace 355 

Geo.  Ertel  Co.  v.  Stahl 65  Fed.  Rep 509,515 

Gerard  v.  Saf e  &  Lock  Co 48  Fed.  Rep 470 

Germain  v.  Wilgus 67  Fed.  Rep 351,  448 

Giant  Powder  Co.  v.  Nitro  Pow- 
der Co 19  Fed.  Rep 198,  205,454 

Gibbs®.  Hoefner 19  Fed.  Rep 73,261 

Gibson®.  Cook 2  Blatch 235,  237 

Gibson®.  Gifford 1  Blatch 218 

Gibson®.  Harris...,  ...1  Blatch ,     205 


TABLE   OF   CITED   CASES.  Iv 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Gibson  v.  Van  Dresar 1  Blatch 522,  525 

Gilbert  &  Barker  Mfg.  Co.  v. 

Bussing 12  Blatch 265,  525 

Giles  v.  Heysinger 150  U.  S 37 

Gill  0.  Wells 22  Wallace 98,  208,  209,  295 

Gillespie  ®.  Cummings 3  Sawyer 340 

Gilmore  v.  Anderson 38  Fed.  Rep 516 

Gilmoret>.  Golay 3  Fisher 272 

Gilpins.  Consequa 3  Washington 438 

Glaenzer  v.  Wiederer... 33  Fed.  Rep 517 

Gloucester  Isinglass  Co.  «.  Brooks.19  Fed.  Rep 121 

Gloucester  Isinglass  Co.  v.  Le 

Page 30  Fed.  Rep 42,  373 

Glue  Co.  v.  Upton 97  U.  S 28 

Godfrey  ®.  Eames 1  Wallace 124 

Goebelfl.  Supply  Co 55  Fed.  Rep 350,446,  460 

Gold  &  Silver  Ore  Co.  v.  Disin- 
tegrating Ore  Co 6  Blatch 162,  267 

Gold  &  Stock  Telegraph  Co.  «. 

Pearce 19  Fed.  Rep 540 

Gold  &  Stock  Telegraph  Co.  v. 

Telegram  Co 23  Fed.  Rep 143,  146 

Goldie  D.  Iron  Co 64  Fed.  Rep 44,  404 

Goldsmiths.  Collar  Co 18  Blatch 324 

Goodyear  v.  Allyn 6  Blatch 401,  447,  468,  517 

Goodyear  ®.  Berry 3  Fisher 516 

Goodyear  v.  Bishop 4  Blatch  325 

Goodyear  v.  Bishop 2  Fisher.. 424,  431,  438 

Goodyear  v.  Gary 4  Blatch 235 

Goodyear  v.  Hills 3  Fisher 525 

Goodyear  v.  Hullihen 3  Fisher 212 

Goodyear  v.  McBurney 3  Blatch 325 

Goodyear  v.  Mullee 5  Blatch 328,  541 

Goodyear  v.  Mullee 3  Fisher 507 

Goodyear  v.  Phelps 3  Blatch 334 

Goodyear  v.  Railroad  Co 1  Fisher 242,  507 

Goodyear  v.  Rubber  Co , 3  Blatch 262,  520 

Goodyear  v.  Rubber  Co 1  Cliff 226 

Goodyear  v.  Vulcanite  Co 2  Fisher 45 

Goodyear  Dental  Vulcanite  Co  v. 

Davis 3  Bann.  &  Ard t 478 

Goodyear  Dental  Vulcanite  Co.  v. 

Folsom  5  Bann.  &  Ard 537 

Goodyear  Dental  Vulcanite  Co.  v. 

Willis 1  Bann.  &  Ard ,  479 

Gordon®.  Anthony 16  Blatch 322,347 


Ivi  TABLE    OF    CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Gordon®  Harvester  Works 23  Fed.  Rep 332 

Gordon  v.  Warder 150  U.  S 299 

Gorham®.  White 14  Wallace 309 

Goss  v.  Cameron 14  Fed.  Rep 4 

Gottfried  ®.  Brewing  Co 5  Bann  &  Ard 397 

Gottfried®.  Brewing  Co 13  Fed  Rep 455 

Gottfried®.  Brewing  Co 22  Fed.  Rep 428 

Gottfried®.  Miller 104  U.  S 232 

Gottfried  ®  Moerlein 14  Fed.  Rep 455 

Gould  ®.  Sessions 67  Fed.  Rep 539,  541 

Gould®.  Spicer 15  Fed  Rep 210.409 

Graham  v.  Crawford  Mfg.  Co 11  Fed.  Rep 162 

Graham  ®.  Johnston 21  Fed.  Rep 82 

Graham  ®.  Mason 1  Holmes 545,  550 

Graham  ®.  Mason 5  Fisher 300 

Graham  v.  McCormick 5  Bann.  &  Ard 64,  86,  124,  162 

Graham  ®.  McCormick 11  Fed.  Rep 160 

Graham®.  Mfg.  Co 11  Fed.  Rep 64,  86,  160,  443 

Graham®.  Mfg.  Co 24  Fed.  Rep 424,  425 

Graham  ®  Teter 25  Fed.  Rep 113 

Gramme  Electrical  Co.  ®  Electric 

Co 17  Fed.  Rep 143 

Grant®.  Raymond 6  Peters 90,  127,  159,  190,  198,  204, 

214.  224,  362.  409 

Grant®.  Walter 148  U.  S 155 

Gray®.  Halkyard 28  Fed.  Rep 485 

Gray  ®.  James 1  Peters'  Circuit  Court  Reports...     91 

350,  398 

Gray®.  Railroad  Co 1  Woolworth  . 537,  538 

Green  ®.  Austin 22  Off.  Gaz 328 

Green®.  Barney 19  Fed.  Rep 458 

Green  ®.  Biddle 8  Wheaton 131 

Green®.  Bishop 1  Cliff 565,  567 

Green®.  Bogue 158  U.  S 453 

Green®.  City  of  Lynn 55  Fed.  Rep 374,478,  480,  481 

Green®.  French 4  Bann.  &  Ard 458,  520,  522 

Green  ®.  French 11  Fed.  Rep 69 

Green®.  Gardner 22  Off.  Gaz 329 

Greenleaf  ®  Mfg.  Co 17  Blatch 428 

Greenwood  ®.  Bracher 1  Fed.  Rep 514 

Grier®.  Baynes 46  Fed.  Rep 261 

Grier  ®.  Baynes 49  Fed.  Rep 248 

Grier®.  Wilt 120  U.  S 372 

Griffith  v.  Segar 29  Fed.  Rep 340 

Griggs®.  Gear 3Gilman 492 

Groth  ®.  Postal  Supply  Co 61  Fed.  Rep 17.1 


TABLE    OF   CITED    CASES. 


Ivii 


Names  of  Cases.  Where  reported.  Pages  in  this  book  _ 

Grover  &  Baker  Sewing  Machine 

Co.  «.  Williams 2  Fisher 503,510,  511 

Guaranty  Trust  Co.®.  Railroad  Co.139  U.  S 106,  238,  483 

Guidet®.  Brooklyn 105  U.  S 28 

Guidet®.  Palmer 10  Blatch ...  524 

Guille  ®.  Swan 19  Johnson 329 

Gunn  V.  Savage 30  Fed.  Rep 165 

Gustin  v.  Rail  Mill  Co 47  Fed.  Rep 23 

Guyon  v.  Serrell 1  Blatch 435 

Haffcke  ®.  Clark 46  Fed.  Rep 2,  154 

Haffcke®.  Clark 50  Fed.  Rep 261 

Hailes  ®.  Stove  Co 133  U.  S 176,  177,  179,  207- 

Hailes®.  Van  Wormer 20  Wallace 30 

Haines  ®.  McLaughlin 135  U.  S 408,409 

Haines®.  Peck 26  Fed.  Rep 203 

Hake®.  Brown 37  Fed.  Rep 186 

Hake®.  Brown 44  Fed.  Rep 491 

Hale  &  Kilbourn  Mfg.  Co.  v.  Hart- 
ford Mattress  Co 36  Fed.  Rep 42 

Hall  ®.  Macneal 107  U.  S 39,  87 

Hall  v.  Stern 20  Fed.  Rep 431 

Hall  ®.  Wiles 2  Blatch 181,  435 

Halstead  v.  Grinnan 152  U.  S 458 

Halstead  v.  Manning 34  Fed.  Rep 316 

Hamilton  ®.  Kingsbury 15  Blatch , 254,  260 

Hamilton®.  Kingsbury 17  Blatch 251,254,  256 

Hamilton  ®.  Rollins   3  Bann  &  Ard 233 

Hamilton  v.  Simons 5  Bissell 541 

Hammacher  ®.  Wilson 26  Fed.  Rep 258 

Hammacher  v.  Wilson 32  Fed.  Rep 567 

Hammerschlag  ®.  Garrett 10  Fed.  Rep 287 

Hammerschlag  ».  Scamoni 7  Fed.  Rep 55 

Hammerschlag  Mfg.  Co.  ®.  Spald- 

ing] *. 35  Fed.  Rep 479 

Hammond  ®.  Hunt 4  Bann.  &  Ard 325 

Hammond  ®.  Organ  Co 92  U.  S 261 

Hammond's  Appeal 2  Off.  Gaz 110 

Hammond  Buckle  Co.  ®.  Good- 
year Rubber  Co 49  Fed.  Rep .". .  516 

Hammond  Buckle  Co.  ®.  Good- 
year Rubber  Co 58  Fed.  Rep 44 

Hancock  Inspirator  Co.  ®.  Jenks  .  .21  Fed.  Rep 99,  103,  156 

Hancock  Inspirator  Co.  ®.  Regester.35  Fed.  Rep 479 

Hanger  ®.  Abbott 6  Wallace 338 

Hanlon  ®.  Primrose 56  Fed.  Rep 460 

Hapgood  ®.  Hewitt 119  U.  8 230,260 


Iviii  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  report  ed.  Pages  in  this  book. 

Hapgood  v.  Rosenstock 23  Fed.  Rep 24L" 

Harding  v.  Handy 11  Wheaton 565,  567 

Harmon  v.  Bird 22  Wendell 231 

Harmon  v.  Struthers 43  Fed.  Rep 85,  302,  303 

Harmon  v.  Struthers 48  Fed.  Rep 373 

Harmon  v.  Struthers 57  Fed.  Rep 85 

Harper  v.  Butler 2  Peters 324 

Harper  &  Reynolds  Co.  v.  Wilgus  .56  Fed.  Rep 383 

Harris  v.  Allen 15  Fed.  Rep 298 

Kartell  «.  Tilghman 99  U.  S 315 

Hartshorn  v.  Barrel  Co 119  U.  S 166,  202,  203 

Hartshorn  v.  Day 19  Howard 233 

Hartshorns.  Roller  Co 18  Fed.  Rep 203 

Harwood  v.  Mfg.  Co 3  Fisher 300 

Haselden  v.  Ogden  . ! 3  Fisher  . . .-. 435 

Haslem  v.  Pittsburgh  Plate  Glass 

Co 71  Off.  Gaz 24 

Hasselman  ®.  Gaar 29  Fed.  Rep  23 

Hatch  v.  Moffitt  15  Fed.  Rep  4,  26 

Hatfleld  v.  Smith 44  Fed.  Rep  250 

Hathaway  v.  Roach 2  Woodbury  &  Minot.415,  416,  417,  418 

Hat  Pouncing  Machine  Co.  v. 

Hedden 148  U.  S 37,  44 

Hat-Sweat  Mfg.  Co.  <o.  Porter 46  Fed.  Rep 257 

Hat-Sweat  Mfg.  Co.  v.  Sewing 

Machine  Co .32  Fed.  Rep 519 

Hat-Sweat  Mfg.  Co.  v.  Waring  ...  .46  Fed.  Rep 257 

Hausknecht  v.  Claypool  1  Black  ...  338,  382,  420 

Havana  Press  Drill  Co.  v.  Ashurst.148  111 314 

Havemeyer  v.  Randall 21  Fed.  Rep 210,  394 

Hawes  «.  Antisdel 2  Bann.  &  Ard 69 

Hawes  v.  Cook 5  Off.  Gaz 478 

Hayden®.  Oriental  Mills 15  Fed.  Rep 338 

Hayden  v.  Oriental  Mills 22  Fed.  Rep 376 

Hayes  v.  Bickelhoupt .21  Fed.  Rep 33 

Hayes  v.  Bickelhoupt 23  Fed.  Rep 340,  386 

Hayes  «.  Dayton 8  Fed.  Rep 340 

Hayes  v.  Leton 5  Fed.  Rep 513 

Hayward  v  Andrews 106  U.  S 250,  322,  456 

Hayward  v.  Andrews 12  Fed.  Rep 233 

Hazelip  ®.  Richardson 10  Off.  Gaz Ill 

Head  ».  Porter 48  Fed.  Rep 320 

Heald  v.  Rice 104  U.  S 39 

Heath  Cycle  Co.  v.  Hay 67  Fed.  Rep 32 

Heath  ®.  Hildreth 1  McArthur's  Patent  Cases.  19,  64.  122 

Heaton  Button  Fastener  Co.  «. 

Macdonald 57  Fed.  Rep 544 


TABLE   OF   CITED   CASES.  Hx 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Hebert  v.  Joly 5  Louisiana 448 

Heaton-Peninsular  Button  Fas- 
tener Co.  v.  Button  Fastener 

Co 58  Fed.  Rep 62 

Heckers  v.  Fowler 2  Wallace 381,  382,  413,  414,  419 

Henderson  v.  Stove  Co  2  Bann.  &  Ard 167 

Hendrie  v.  Sayles 98  U.  8 149,  229,  235,  242,  347 

Hendy  «.  Iron  Works 127  U.  S 33,  42,  460 

Henry  v.  Stove  Co 2  Bann.  &  Ard 322 

Henry  v.  Stove  Co 5  Bann.  &  Ard 87,  108 

Henry  «.  Tool  Co 3  Bann.  &  Ard 144 

Henzel    v.   California    Electrical 

Works 51  Fed.  Rep 534 

Herbert  v.  Butler 97  U.  S 420 

Herman  v.  Herman 29  Fed.  Rep. 263 

Herring  ».  Gage 3  Bann.  &  Ard 545,  546 

Herring  v.  Nelson 3  Bann.  &  Ard 209 

Heulings  v.  Reid 53  Fed.  Rep 50 

Hewett  v.  Swift 3  Allen 336 

Heysinger  v.  Rouss 40  Fed.  Rep 373 

Hiatt  v.  Twomey 1    Devereux    &    Battle's    Equity 

Cases 239 

Hicks  0.  Kelsey 18  Wallace 26 

Higby  v.  Rubber  Co .18  Fed.  Rep 540 

Hillfl.  Biddle 27  Fed.  Rep 183 

Hill  v.  Dunklee 1  McArthur's  Patent  Cases 66 

Hill  v.  Epley 31  Penn.  State 263 

Hill  t>.  Smith 32  Fed.  Rep 491 

Hill  v.  Thuermer 13  Indiana 231 

Hill  v.  Whitcomb 1  Holmes 250 

Hill  v.  Wooster 132  U.  S 19,  1 15 

Himely  v.  Rose 5  Cranch 497 

Hipp  0.  Babin 19  Howard 498 

Hisey  «.  Peters 71  Off.  Gaz Ill,  119,  121 

Hitchcock  v.  Treraaiue 9  Blatch 489 

Hitchcock  v.  Tremaine 4  Fisher 167 

Hitchcock  v.  Tremaine 5  Fisher 490 

Hobbie  v.  Jennison 149  U.  S 244 

Hobbie  v.  Smith 27  Fed.  Rep    69,  424,  431 

Hockholzer  v.  Eager 2  Sawyer 520,  521 

Hodge  v.  Railroad  Co 6  Blatch 227,  319,  505,  520,  523 

Hodge  v.  Railroad  Co 4  Fisher 323 

Hodge  v.  North  Missouri  Rail- 
road Co 1  Dillon 247 

Hoe  ID.  Boston  Daily  Advertiser ...  14  Fed.  Rep 524 

Hoe  v.  Kahler 12  Fed.  Rep 103 


Ix  TITLE   OF   CITED    CASES. 

Names  of  Cases.  WheJe  reported.  Pages  in  this  book. 

Hoe  ».  Knap 27  Fed.  Rep 157,  524 

Hoeltge  v.  Hoeller 2  Bond 269 

Hoff  v.  Iron  Clad  Mfg.  Co 139  U.  S 26 

Hoffheins  v.  Brandt 3  Fisher 212 

Hogg  v.  Emerson 6  Howard 160 

Hogg  v.  Emerson 11  Howard 165,  410 

Hohorst  v.  Howard 37  Fed.  Rep 455 

Holbrook  v.  Small 3  Bann.  &  Ard 438 

Holden  v.  Curtis 2  New  Hampshire 231,  237 

Holiday  v.  Mattheson 24  Fed.  Rep 254 

Holmes  v.  Truman 67  Fed.  Rep 388,  408,  432 

Holmes  Alarm  Tel.  Co.  v.  Tele- 
phone Co 42  Fed.  Rep 34,  143 

Holmes  Protective  Co.  v.  Alarm 

Co 21  Fed.  Rep 144 

Holmes  Protective  Co.  v.  Alarm 

Co 22  Fed.  Rep 143 

Holmes  Protective  Co.  ®.  Alarm 

Co 31  Fed.  Rep 517 

Holliday  v.  Pickhardt 12  Fed.  Rep 514 

Holliday  v.  Pickhardt 29  Fed.  Rep 171.  268 

Hollister  v  Benedict  Mfg.  Co 113  U.  S 19,  20,  23,  44 

Holloway  v.  Dow 54  Fed.  Rep 99,  156,  383 

Horman  Patent  Mfg.  Co.  v.  Rail- 
road Co  15  Blatch 340 

Horn  v.  Detroit  Co 150  U.  S 453 

Hoskin  v.  Fisher 125  U.  S 203,  207,  400 

Hotchkiss  v.  Greenwood 11  Howard 26 

Hotchkiss  v.  Greenwood 4  McLean 50 

Hotchkiss  «.  Oliver 5  Denio 367 

Hotchkiss  «.  Wooden  Ware  Co. .  .53  Fed.  Rep 278,  279,  280 

Howard®.  Mast 33  Fed.  Rep 540 

Howard  v.  Plow  Works 35  Fed.  Rep 69,  334 

Howe  v.  Morton 1  Fisher 516,  523,  525 

Howe  v.  Russell 36  Maine 567 

Howe  v.  Williams 2  Cliff 287 

Howe  Machine  Co.  ®.  National 

Needle  Co 134  U.  S 42,  165,  166,  171 

Howe  Machine  Co.  v.  Needle  Co. .  .21  Fed.  Rep 42 

Howes  v.  McNeal 3  Bann.  &  Ard 81,  124 

Howes  v.  McNeal 5  Bann  &  Ard 57 

Howes  «.  Nute 4  Cliff 347,  436 

H.  T.  Slemmer's  Appeal 58  Penn 50 

Hubbell  v.  De  Land .14  Fed.  Rep 451 

Hubel  v.  Dick 28  Fed.  Rep  64,  268,  299,  308 

Hubel  v.  Tucker 24  Fed.  Rep 121 


TABLE   OF   CITED   CASES.  Ixi 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Huber  v.  Nelson  Mfg.  Co 143  U.   8 144,  201 

Huber  v.  Sanitary  Depot 34  Fed.  Rep  325,340 

Hudson  v.  Draper 4  Fisher 387 

Hull  v.  Commissioner  of  Patents.  .7  Off.  Gaz;  8  Off.  Gaz 109,  115 

Hulse  v.  Bonsack  Machine  Co 65  Fed.   Rep 241 

Humphreys  v.    Douglas 10  Vermont 327 

Hunnicutt  v.  Peyton 102  U.  S 423 

Hunt  ®.  Garsed 51  Fed.   Rep 40 

Hunt  Bros.  Fruit  Packing  Co.  v. 

Cassidy 53  Fed.  Rep 45,  69,  297,  383,  426, 

430,  432,  460,  461 

Hunt  Bros.  Fruit  Packing  Co.  v. 

Cassidy 64  Fed.   Rep 433 

Huntington  v.  Heel  Plate  Co 33  Fed.   Rep 528 

Hupfeld  v.  Automaton  Piano  Co.  .66  Fed.  Rep 314,  326 

Kurd  v.  Snow 35  Fed.  Rep 29 

Hurlbut «.  Schillinger 130  U.  S 551 

Hussey  v.  Whitely 2  Fisher 528 

Ide  0.  Engine  Co 31  Fed.  Rep 449,  536 

Ide  v.  Engine  Co 39  Fed.  Rep 34 

Illingworth  v.  Atha 42  Fed.  Rep 113,  114 

Illinois  Central  Railroad  Co.  v. 

Turill 110  U.  S 553 

Imhaeuser  v.  Buerk 101  U.  S 61,  297,  299 

Imlay  v.  Railroad  Co 4  Blatch  ....    347 

India  Rubber  Comb  Co.  v.  Phelps . .  4  Fisher 489 

Indianapolis  &  St.    Louis  Rail- 
road Co.  «.  Horst 93  U.  S 422,  423 

Indurated  Fibre  Co.  v.  Grace 52  Fed.  Rep 355,  461 

Ingalls  v.  Tice 14  Fed.  Rep. 325 

Ingersoll  ®.  Jewett. . .  t 16  Blatch 374 

Ingersoll  v.  Musgrove 3  Bann.  &  Ard 432 

In  re  Brosnahan 18  Fed.  Rep 136 

In  re  Chinnock 21  D.  C.  R 110 

In  re  Corbin  and  Martlett 1  Me  Arthur's  Patent  Cases .       73 

'in  re  Drawbaugh    66  Off.  Gaz 112 

In  re  Drawbaugh 67  Off.  Gaz 83 

In  re  Haberman  Mfg.  Co 147  U.  S    531,  534 

In  re  Hebard 1  McArthur's  Patent  Cases 38,  298 

In  re  Hemiup 3  Paige 565,  567 

InreHohorst  150  U.  S 269,  314,  317 

In  re  Hoeveler  &  McTighe 21  D.  C.  R 110,  111 

In  re  Kemper 1  McArthur's  Patent  Cases 2 

In  re  Maynard 1  McArthur's  Patent  Cases 26 


Ixii  TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

In  re  Schaefer 66  Off.  Gaz 56 

In  re  Seeley 1  McArthur's  Patent  Cases -.     19 

Insurance  Co.  v.  Eggleston 96  U.  S 259 

Insurance  Co.  v.  Lanier 95  U.  S 420 

Insurance  Co.  0.  Sea 21  Wallace 411,  412 

International  Crown  Co.  0.  Car- 

michael 44  Fed.  Rep 449 

International  Crown  Co.  v.  Gay- 
lord  140  U.  S 84,  85,  87 

International  Crown  Co.  0.  Rich- 
mond  30  Fed.  Rep 83,  124 

International  Terra-Cotta  Co.  0. 

Maurer 44  Fed.  Rep 210,  383,  394,  466 

Iowa    Barb    Steel    Wire   Co.  v. 

Barbed  Wire  Co 30  Fed.  Rep 334,  541 

Irwin  0.  McRoberts 4  Bann.  &  Ard 524 

Isaacs  ».  Cooper 4  Washington 511 

Ives  0.  Hamilton  . .  . .  92  U.  S  . .  .304 


Jackson  v.  Nagle 47  Fed.  Rep.   332 

Jacob  0.  United  States 1  Brockenbrough 281 

Jacobs  0.  Baker 7  Wallace 15 

Jacobs  0.  Hamilton  County  ... 4  Fisher 327 

Jacobson  v.  Alpi 46  Fed.  Rep 517 

James  0.  Campbell 104  U.  S 130,  137,  201,  399 

Jaros  Underwear  Co.  0.  Fleece 

Underwear  Co 60  Fed.  Rep 251,  340 

Jenkins  v.  Greenwald 1  Bond 547 

Jenkins  0.  Greenwald 2  Fisher 347,  516,  534 

Jenkins  0.  Ruberg 39  Fed.  Rep 516 

Jenkins  0.  Stetson 32  Fed.  Rep 198, 209 

Jennings  0.  Dolan 29  Fed.  Rep 330,  563 

Jennings  0.  Kibbe    10  Fed.  Rep 386 

Jennings  0.  Kibbe 24  Fed.  Rep 69 

Jennisons  0.  Leonard 21  Wallace 412 

Johnsen  0.  Fassman 1  Woods ...     81 

Johnson  0.  Brooklyn  Co 37  Fed.  Rep 536 

Johnson  0.  Johnston 60  Fed.  Rep 15 

Johnson  0.  McCullough 4  Fisher 57,  222 

Johnson  0.  Olsen 61  Fed  Rep 172 

Johnson  0.  Railroad  Co 105  U.  S 203,  209 

Johnson  0.  Railroad  Co 33  Fed.  Rep 61 

Johnson  0.  Root 2  Cliff 410 

Johnson  0.  Root 1  Fisher 387 

Johnson  Co.  0.  Steel  Co. .    67  Fed.  Rep 26 


TABLE   OF   CITED   CASES.  Ixiii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Johnson    Signal    Co.    v.    Union 

Switch  &  Signal  Co 55  Fed.  Rep 252 

Johnson    Signal    Co.    v.    Union 

Signal  Co  59  Fed.  Rep 230 

Johnson  Street  Rail  Co.  v.  North 

Branch  Steel  Co 48  Fed.  Rep 483 

Johnston  v.  Mining  Co 148  U.  8 458 

Jonathan  Mills  Mfg.  Co.  ».  White- 
hurst  56  Fed.  Rep 231 

Jonathan  Mills  Mfg.  Co.  v.  White- 
hurst  60  Fed.  Rep 490 

Jones  v.  Bank 5  Howard 527 

Jones  v.  Barker 11  Fed.  Rep 84,  170 

Jones  v.  Berger 58  Fed.  Rep 233,  255,  469,  470 

Jones  v.  Buckell 104  U.  8 422 

Jones  v.  Clow 39  Fed.  Rep. 34 

Jones  v.  Moorehelad 1  Wallace 497 

Jones  v.  Wetherell 1  McArthur's  Patent  Cases 122 

Jones  Co.  v.  Munger  Co 49  Fed.  Rep 300 

Jordan  ®.  Dobson 2  Abbott 217,  218,  224,  532 

Jordan  v.  Dobson 4  Fisher 209 

Joslin  v.  Northern  Pacific  Ry.  Co.  .55  Fed.  Rep 302 

Judson  v.  Bradford 3  Bann.  &  Ard 426,  430 

Judson  v.  Cope 1  Fisher 54 

Judson  v.  Cook 11  Barbour 329 

Judson  L.  Thomson  Mfg.  Co.  •». 

Hatheway 41  Fed.   Rep.. 516 

J.  L.  Mott  Iron  Works  v.  Cassidy .  .31  Fed.  Rep 26 

J.  L.  Mott  Iron  Works  v.  Skirm. .  .30  Fed.  Rep 34 

J.  L.  Mott  Iron  Works  «.  Stand- 
ard Mfg.  Co 53  Fed.  Rep 172 

Kaaps  «.  Hartung 23  Fed.  Rep 40 

Kaolatype  Engraving  Co.  v.  Hoke.30  Fed.  Rep 233,  460 

Kearney  v.  Railroad  Co 27  Fed.  Rep 23f 

Kearney  v.  Railroad  Co 32  Fed.  Rep : 64 

Keeler  v.  Folding  Bed  Co 157  U.  S 244 

Keep  v.  Fuller 42  Fed.  Rep 567 

Kelley  v.  Ypsilanti  Mfg.  Co    44  Fed.  Rep    265,  449 

Kendall  v.  Winsor 21  Howard 79,  80,  133,  137 

Kendrick  v.  Emmons 2  Bann.  <fe  Ard 143,  154- 

Kendrick  v.  Emmons 3  Bann.  &  Ard 298 

Kennedy  v.  Hazelton 128  U.  S 241 

Kennedy  v.  Penn.  Iron  <fe  Coal  Co.  .67  Fed.  Rep 523 

Kenrick  v.  United  States 1  Gallison 281 

Keplinger  v.  DeYoung 10  Wheaton 330 


Ixiv  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Kerosene  Lamp    Heater    Co.    V. 

Fisher 5  Bann.  <fc  Ard 560 

Kerosene    Lamp    Heater    Co.  v, 

Littell 3  Bann.  &  Ard  . . , 209 

Ketchum  Harvester  Co.  v.  John- 
son Harvester  Co 8  Fed.  Rep 433 

Keyes  «.  Grant 118  U.  S 407 

Keyes  v.  Mining  Co 158  U.  S 262,  402,  456 

Keyes  o.  Refining  Co    31  Fed.  Rep 513,518 

Keyes  v.  Refining  Co 43  Fed.  Rep 428 

Keystone  Bridge  Co.  v.  Iron  Co. .  .95   U.   S 165,  170 

Keystone  Mfg.  Co.  t>.  Adams    151  U.  S 41,  44,  544,  550 

Kidd  «.  Hurry 28  Fed.  Rep 449 

Kidd  v.  Horry 33  Fed.  Rep 23 

Kidd  v.  Ransom 35  Fed.  Rep 478 

Kilbourne  v.  Bingham  Co 47  Fed.  Rep 26 

Kilmer  Mfg.  Co.  v.  Griswold 67  Fed.  Rep • 487 

Kimberly  v.  Arms 129  U.  S 566 

King  v.  Gallon 109  U.  S 42 

King  v.  Frostel 4  Bann.  &  Ard 23 

Kinsman  ®.  Parkhurst 18  Howard 497 

Kirby  v.  Mfg.  Co 10  Blateh 208 

Kirby  Bung  Mfg.  Co.  v.  White 1  McCrary 515,  523,  524 

Kirk  ».  Commissioner  of  Patents.  .37  Off.  Gaz 113,  114,  125 

Kirk  v.  Du  Bois 28  Fed.  Rep 455,  473 

Kirk  v.  Du  Bois 33  Fed.  Rep 121 

Kittle  «    De  Graff 30  Fed.  Rep 455 

Kittle  v.  Hall '.   29  Fed.  Rep 245,  458 

Kittle  v.  Hall ...   30  Fed.  Rep 183 

Kittle  v.  Rogers 33  Fed.  Rep 455 

Klein  v.  Russell 19  Wallace 75,  170,  208,  407 

Knapp  v.  Morss 150  U.  S 100,  166,  302 

Knapp  v.  Shaw 15  Fed.  Rep 484 

Knickerbocker  Co.  «.  Rogers 61  Fed.  Rep 62,  70,  154 

Knight  v.  Railroad  Co Taney's  Circuit  Court  Decisions.  .201, 

208 

Knox  v.  Loweree 1  Bann.  &  Ard 81 

Knox  «.  Quicksilver  Mining  Co 6  Sawyer 295,  546,  547,  561 

Korn  «.  Wiebusch 33  Fed.  Rep 453,  470 

Kraus  v.  Fitzpatrick  34  Fed.  Rep 60 

Krementz  «.  Cottle  Co 148  U.  S 24,  44 

Krick  v.  Jansen 52  Fed.  Rep 353,  460 


La  Baw  v.  Hawkins 2  Bann.  &  Ard 424,  429,  549,  550 

Ladd  v.  Cameron 25  Fed.  Rep 517 


TABLE   OF   CITED   CASES.  xv 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Lake    Shore    R.  R.  Co.   v.    Car 

Brake  Shoe  Co 110  U.  S    164 

Lalance  &  Grosjean   Mfg.  Co.  v. 

Haberman  Mfg.  Co 53  Fed.  Rep 287 

Lalance  &  Grosjean  Mfg.  Co.  v. 

Haberman  Mfg.  Co 55  Fed.  Rep 153 

Lalance  &  Grosjean  Mfg   Co.  •». 

Mosheim     48  Fed.  Rep 460 

Lamprey  Protector  Co.  ».  Econ- 
omy Heater  Co 62  Fed.  Rep  125 

Lamson  Cash  Reg.   Co.  v.  Kep- 

linger 45  Fed.  Rep 170 

Landesmann  ®.  Jonasson 32  Fed.  Rep 23 

Lane  &  Bodley  Co.  v.  Lock 150  U.  S ,  .  .261,  263,  458 

Lapham  Dodge  Co.  v.  Severin 40  Fed.  Rep  173 

LaRue  v.  Electric  Co 28  Fed.  Rep 166 

LaRue  ®;  Electric  Co 31  Fed.  Rep     76,  166 

Lawther  v.  Hamilton 124  U    S , 5.  37 

Lawther  ®.  Hamilton 64  Fed.  Rep 544,  553 

Leach  v.  Chandler  18  Fed.  Rep 268 

Leake  «.  Gilchrist 2  Devereaux 324 

Lee  0.  Pillsbury 49  Fed.  Rep 432 

Lee  v.  Upson  &  Hart  Co 43  Fed.  Rep 26 

Lee  v.  Upson  &  Hart  Co 43  Fed.  Rep  69 

Lefflngwell  v.  Warren 2  Black 338 

Leggett  v.  Avery 101  U.  S 79.  399 

Leggett  ®.  Standard  Oil  Co 149  U.  S 23,  203 

Lehigh   Valley  Railroad    Co.  ®. 

Kearney 158  U.  S  100,  166 

Lehnbeuter  v.  Holthaus 105  U.  S 76 

Lenox  «.  Roberts . .    2  Wheaton 322 

Leonard  v.  Lovell 29  Fed.  Rep 63 

LePage  Co.  v.  Russia  Cement  Co.  .51  Fed.  Rep 355 

Le  Roy  v.  Tatham 14  Howard 156 

Levy  v.  Dattlebaum 63  Fed.  Rep 234 

Lewis  v.  Johns 34  California 329 

Lewiston  Falls  Mfg.  Co.  ®.  Frank- 
lin Co  54  Maine  502 

Lexington  &  Ohio  Railroad  Co.  v. 

Applegate 8  Dana  531 

Liddle  v.  Cory 7  Blatch 540,  541 

Lightner  v.  Railroad  Co 1  Lowell 260 

Ligowski  Clay  Pigeon  Co.  ®.  Clay 

Bird  Co 34  Fed.  Rep  . .    .124,  161,  297,  414,  460 

Lilliendahl  v.  Detweller 18  Fed.  Rep 340 

Lincoln  v.  Power. .  .  .151  U.  S  . .  .409 


TABLE   OF   CITED    CASES. 

Names  of  Cases. .  Where  reported.  Pages  in  this  book. 

Lindsay  v.  Stein 10  Fed.  Rep. .-. 126 

Little  v.  Downing 37  New  Hampshire 401 

Littlefleld  v.  Perry 21  Wallace  ....  .205,  231,  240,  242,  243, 

325,  326,  443 

Livingston  v.  Jones 1  Fisher  . .    387 

Livingston  v.  Woodworth 15  Howard 544 

Locke  v.  Lane  Co 35  Fed.  Rep  397 

Lockwood  ».  Cleveland 6  Fed.  Rep 269 

Lockwood  v.  Cleveland 20  Fed.  Rep 271 

Locomotive  Truck  Co.  v.   Rail- 
way Co 10  Blatch 340 

Locomotive  Truck  Co.  v.  Rail- 
road Co 2  Fed.  Rep 438,  442,  546,  556 

Loercher  v.  Crandall  11  Fed.  Rep 298 

Loewer  «.  Ford 55  Fed.  Rep 43 

Loom  Co.  v.  Higgins 105  U.  S.  ..25,  64,  153,  173,  174,  367,  398 

Loomis  v.  Loomis 26  Vermont 236 

Lord  v.  Machine  Co 24  Fed.  Rep 457 

Lorillard  v.  Dohan 9  Fed.  Rep 5 

Lorillard  v.  Ridgway    4  Bann.  &  Ard 23 

Loring  v.  Booth 52  Fed.  Rep 521 

Lovell  Mfg.  Co.  D.  Cary 147  U.  S 43 

Lovell  v.  Davis 101  U.  S 421 

Low®.  Stove  Co 36  Fed.  Rep     40 

Lowell  Mfg.  Co.  v.  Hartford  Car- 
pet Co  2  Fisher 536 

Lowrey  v.  Aluminum  Co 56  Fed.  Rep 234,  452,  467 

Lowrey  v.  Aluminum  Co 68  Fed.  Rep 234 

Lyell  v.  Miller 6  McLean 415 

Lyman  Ventilating  &  Refrigerator 

Co.  ®.  Lalor 1  Bann.  &  Ard 56 

Mabie  «.  Haskell 2  Cliff 44,  289,  297 

Macauley  «  Machine  Co  . . .    9  Fed.  Rep 516 

Macbeth  «.  Braddock  Glass  Co 54  Fed.  Rep 542 

Macbeth  «.  Gillinder 54  Fed.  Rep 173,  309,  478,  542 

Macbeth  v.  Lippincott  Glass  Co. .  .54  Fed.  Rep  516 

Machesney  v.  Brown 29  Fed.  Rep 232 

Machine  Co.  ®.  Murphy 97  U.  S 298 

Mack  v.  Levy    49  Fed.  Rep ...  540 

Mack  v.  Levy 59  Fed.  Rep 540 

Mack  v.  Levy 60  Fed.  Rep 373,  374 

Mack  v.  Optical  Mfg.  Co 52  Fed.  Rep 43 

Mackaye  v.  Mallory 12  Fed.  Rep 233 

MacKay  «.  Jackman 12  Fed.  Rep 4 

MacKnight  «.  McNiece 64  Fed.  Rep 23,  329 

Maddock  v.  Coxon 45  Fed.  Rep 162,  164 


TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Magic  Ruffle  Co.  ».  Douglas 2  Fisher  73,  431 

Magin  v.  Karle 150  U.  S 19 

Magowan  v.  Belting  Co 141  U.  S 23,  44 

Mahn  v.  Harwood 112  U.  S 201,  202 

Mahn  v.  Harwood 3  Bann.  &  Ard 40 

Mahon  v.  McGuire  Mfg.  Co 51  Fed.  Rep 26,  38 

Maitland  v.  Gibson 63  Fed.  Rep 23 

Mallory  Mfg.  Co.  v.  Hickok 20  Fed.  Rep 516 

Maltby  «.  Bobo 14  Blatch 328 

Mann's  Car  Co.  v.  Monarch  Car 

Co 34  Fed.  Rep 42  414 

Manufacturing  Co.  v.  Cowing 105  U.  S 549,  551 

Manufacturing  Co.  v.  Ladd 102  U.  S 210 

Many  v.  Jagger 1  Blatch 363 

Many  v.  Sizer 1  Fisher 68,  310,  387,  515 

Marchand  v.  Emkin 132  U.  8 42 

Marchand  v.  Emkin 26  Fed.  Rep 42 

Market  St.  Ry.  Co.  v.  Rowley.  . .  .155  U.  S 407 

Marks  Chair  Co.  v.  Wilson 43  Fed.  Rep 414 

Marsh  v.  Commissioner 3  Bissell 82 

Marsh  ®.  Dodge 4  Hun 257 

Marsh  v.  Nichols 128  U.  S 130,  151,  315,  546 

Marsh  v.  Seymour 97  U.  S 198,  442 

Marsh  v.  Stove  Co 51  Fed.  Rep 388 

Marston  v.  Sweet 66  N.  Y 257 

Martin  Cash  Carrier  Co.  v.  Martin. 67  Fed.  Rep 375 

Marvin  v.  Gotshall 36  Fed.  Rep 45 

Maryland  Hominy  Co.  «.  Dorr  ...  .46  Fed.  Rep 154 

Mason  v.  Graham 23  Wallace 300,  550 

Mason  v.  Railroad  Co 52  Maine 567 

Masseth  v.  Johnston 59  Fed.  Rep. 437 

Masseth  v.  Palm 51  Fed.  Rep 298 

Masseth  ®.  Reiber 59  Fed.  Rep 134 

Massie's  Heirs  ».  Graham's  Adm'rs.3  McLean 493 

Mast,  Foos  &  Co.  «.  Windmill  & 

Pump  Co 68  Fed.  Rep . .  484 

Matthews  v.  Flower 25  Fed.  Rep 195,  399 

Matthews  v.  Machine  Co 105  U.  S 203 

Matthews  v.  Mfg.  Co 18  Blatch 340 

Matthews  v.  Mfg.  Co 19  Fed.  Rep 479 

Matthews  i>.  Schoneberger 4  Fed.  Rep 164 

Matthews  v.  Skates 1  Fisher 307,  310 

Matthews  «.  Spangenberg 14  Fed.  Rep 186.  428 

Matthews  v.  Spangenberg 19  Fed.  Rep 483 

Maxwell  v.  Kennedy 8  Howard  459,  4% 

y  v.  Chaffee 2  Dillon 234,  249,  254 


Ixviii  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book 

May  v.  County  of  Buchanan 29  Fed.  Rep 136,  327,  376 

May  0.  County  of  Cass 30  Fed.  Rep 327 

May  0.  County  of  Juneau 3G  Fed.  Rep 233,  327 

May  v.  County  of  Logan 30  Fed.  Rep 322,  324,  327,  376 

May  v.  County  of  Mercer 30  Fed.  Rep 327,  333,  348 

May  v.  County  of  Rails 31  Fed.  Rep 327 

May  v.  County  of  Saginaw 32  Fed.  Rep 233 

May  v.  Juneau  County 137  U.  S 364,  408 

May  v.  LeClaire 11  Wallace 238 

Maynard  0.  Pawling 5  Bann.  &  Ard 331 

Mayor  of  New  York  v.  American 

Cable  Ry.  Co 60  Fed.  Rep 384 

McAleer  0.  United  States 150  U.  S 263 

McArthur  v.  Supply  Co    19  Fed.  Rep 203,  210 

McBride  0.  Plow  Co 40  Fed.  Rep 316 

McBride  0.  Plow  Co 44  Fed.  Rep 162,  164 

MeClain  v.  Ortmayer 141  U.  S 21,  37,  44,  163,  166,  169, 

171,  296 

MeClain  v.  Ortmayer 33  Fed.  Rep 36 

McClery  0.  Baker 63  Fed.  Rep 23 

McCluny  0.  Silliman 3  Peters . .  338 

McClure  0.  Jeffrey 8  Indiana 240 

McClurg  0.  Kingsland 1  Howard 7,  131,  140,  173 

McComb  0.  Brodie 1  Woods. . . .160,  161,  288,  289,  424,  426 

McComb  0.  Ernest  1  Woods 72,  288,  511 

McCormick  v.  Jerome 3  Blatch 538 

McCormick  0.  Seymour 2  Blatch 92,  396 

McCormick  0.  Seymour 3  Blatch 438 

McCormick  0.  Talcott 20  Howard 167,  301 

McCormick  Machine  Co.  0.  Har- 
vester Works 42  Fed.  Rep 66,  121 

McCoy  0.  Nelson 121  U.  S 457 

McCreay  0  Pennsylvania  Canal  Co.141  U.  S 553 

M'Culloch  0.  Maryland 4  Wheaton 376 

McCulloh  0.  Association 45  Fed.  Rep 246 

McDonald  v.  Whitney 24  Fed.  Rep 69 

McDonald  0.  Whitney 39  Fed.  Rep 492 

McFarland  0.  'Spencer 23  Fed.  Rep 25 

McKay  &  Copeland  Mach.  Co.  v. 

Claflin 58  Fed.  Rep 164,  388 

McKay  0   Jackman 16  Reporter 531 

McKay  0.  Smith 39  Fed.  Rep 257,  258 

McKay  0.  Wooster 2  Sawyer 254 

McKeever  v.  United  States 23  Off.  Gaz 263 

McKenna  0.  Fisk 1  Howard 349 

McKernan  0  Hite  ...  .  .6  Indiana.. .  .   237 


,  TABLE    OF    CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book 

McMahon  v.  Tyng 14  Allen 392 

McMickin  ».  Perin '. 18  Howard  568 

M'Millin  «.  Barclay 5  Fisher 125,  263 

McMillin  «.  Conrad 16  Fed.  Rep  523 

M'Millin  ®.  Rees 5  Bann.  &  Ard 63,  64,  161,  162,  164 

McMillin  «.  Transportation  Co 18  Fed.  Rep 351 

McMurray  «.  Mallory Ill  U.  S 182 

McMurray  v.  Miller .16  Fed.  Rep  23 

McNab  «.  Mfg.  Co 32  Fed.  Rep 23 

McNeil  v.  Holbrook 12  Peters 338 

McJSlBh  v.  Everson 5  Bann.  &  Ard 59 

Me  Williams  v.  Webb 32  Iowa 236 

Me  Williams  Mfg.  Co.  v.  Blundell.  .11  Fed.  Rep 525 

Meers  v.  Kelly 31  Fed.  Rep 19 

Merchant  «.  Lewis 1  Bond 414 

Mergenthaler  Co.  ®.  Press  Pub.  Co.57  Fed.  Rep     72,  303 

Mergenthaler  Co.  «.  Seymour 66  Off.  Gaz 113 

Merriam  v.  Drake  5  Fisher 298 

Merriam  v.  Smith 11  Fed.  Rep 322 

Merrill  ».  Yeomans 94  U.  S  133 

Merrow  v.  Shoemaker 59  Fed.  Rep 6<>,  300 

Mershon  v.  Furnace  Co 24  Fed.  Rep 456 

Mevs  v.  Conover 125  U.  S 205,  554 

Mewes'  Appeal 2  Off  Gaz Ill 

Meyer  v.  Bailey. 2  Bann.  &  Ard .' 212 

Meyer  ».  Pritchard 1  Bann.  &  Ard 42 

Michaels  ».  Roessler 34  Fed.  Rep 154 

Michigan  Cent.  R  R.  Co.  «.  Car 

Heating  Co 67  Fed.  Rep 118,  366,  463 

Middletown  Tool  Co.  «.  Judd 3  Fisher 212 

Miller  v.  Androscoggin  Pulp  Co ...  5  Fisher 5 

Miller  v.  Brass  Co 104  U.  S 198,  201,  206,  369 

Miller  v  Eagle  Co 151  U.  S 99,  161,  162,  300,  302 

Miller  v.  Force 116  U.  S 6,  42 

Miller  v.  Mclntyre 6  Peters 471 

Miller  v.  Wheeler  &  Wilson  Mfg.  Co.46  Fed.  Rep 316 

Miller-Magee  Co.  v.  Carpenter 34  Fed.  Rep 313 

Milligan  v.  Mfg.  Co 21  Fed.  Rep 239 

Milligan  &  Higgins  Glue  Co.  v. 

Upton 1  Bann.  &  Ard 210 

Millner  v.  Schofleld '.    .  .4  Hughes 331 

Millner  v.  Voss 4  Hughes 35 

Minneapolis  Harvester  Works  v. 

Machine  Co  28  Fed.  Rep 507 

Minturn  v.  Seymour 4  Johnson's  Chancery 527 

Mitchell  «.  Hawley 16  Wallace 226,  227,  251,  255 


Ixx  TABLE    OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Moat  v.  Holbein 2  Edward's  Chancery 530 

Moffittfl.  Garr 1  Black ..   204 

Montrose  v.  Mabie 30  Fed.  Eep 261 

Moody  0.  Fiske 2  Mason ..  288 

Moore  v.  Bare 11  Iowa 237 

Moore  0.  Marsh 7  Wallace 233,  242,  321,  324 

Morey  v.  Lockwood 8  Wallace 60,  198,  304 

Morgan  v.  Daniells 153  U.  S 121 

Morgan  Envelope  Co.  0.  Albany 

Paper  Co 152  U.  S 28,  171,  172.  254 

Morgan  Envelope  Co.  0.  Albany 

Paper  Co 40  Fed.  Rep 38 

Morley  Machine  Co.  v.  Lancaster. .  129  U.  8 167,  302, 

Morris  v.  Barrett 1  Bond 288 

Morris  0.  Kempshall  Mfg  Co 20  Fed.  Rep 162 

Morris  v.  Mfg.  Co  . , 3  Fisher 518,  524 

Morris  v.  Mfg.  Co 20  Fed  Rep 270 

Morris  v.  McMillin 112  U.  S ' 19,  23 

Morris  0.  Shelbourne 4  Fisher 524 

Morss  v.  Knapp 35  Fed.  Rep 536 

Morss  0.  Knapp 37  Fed.  Rep 373,  540 

Morton  v.  Infirmary 5  Blatch 3,  364 

Mosler  Safe  &  Lock  Co.  v.  Mosler.22  Fed.  Rep 33 

Moulton     v.     Commissioner    of 

Patents 61  Off.  Gaz 4 

Mowry  v.  Railroad  Co 5  Fisher 514 

Mowry  v.  Whitney 14  Wallace ...  8,  225,  274,  275,  285,  554 

Muller  v.  Ellison 27  Fed.  Rep 23 

Mumma  v.  Potomac  Co 8  Peters  . 339,  533 

Mundy  v.  Mfg.  Co 34  Fed.  Rep 538,  540 

Munson  v.  New  York 124  U.  S 19 

Munson  v.  New  York 11  Fed.  Rep 489,  490 

Munson  v.  New  York 19  Fed.  Rep 535 

Murdock  v.  Finney    21  Missouri 236 

Murphy  v.  Trenton  Rubber  Co 45  Fed.  Rep 29,  300 

Myers  v.  Cunningham 44  Fed.  Rep 314,  348,  361 

Myers  v.  Dunbar 1  Bann.  &  Ard 495 

Myers  0.  Frame 8  Blatch 186 

Nathan  Mfg.  Co.  v.  Craig 47  Fed.  Rep 271,  350 

Nathan  Mfg.  Co.  0.  Craig 49  Fed.  Rep 162,  267 

National  Box  &  Paper  Co.  v. 

American  Paper  Box  Co 48  Fed.  Rep 479 

National  Bunching  Machine  Co. 

0.  Williams  Co 44  Fed.  Rep 34 


TABLE   OF   CITED   CASES.  Ixxi 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

National  Cable  Ry.  Co.  v.  Sioux 

City  Cable  Ry.  Co 42  Fed.  Rep 23,  524 

National  Car  Brake  Shoe  Co.  ». 

Mfg.  Co 19  Fed.  Rep  ...  .310,  334,  386,  428,  434 

National   Cash   Register  Co.    v. 

American  Cash  Register  Co. .  .47  Fed.  Rep 479 

National    Cash   Register  Co.   v. 

American  Cash  Register  Co. .  .53  Fed.  Rep.  .32,  158,  300,  301,  303,  480 
National    Cash   Register  Co.  v. 

Boston  Cash  Recorder  Co. ...  .41  Fed.  Rep 536 

National   Cash    Register  Co.   t>. 

Lamson  Store  Service  Co 60  Fed.  Rep 65,  270 

National  Co.  v.  Belcher 68  Fed.  Rep 24 

National  Device  Co.  ®.  Lloyd 40  Fed.  Rep 73 

National  Machine  Co.  «.  Brown  . .  .36  Fed.  Rep 64,  414 

National  Machine  Co.  v.  Hedden     29  Fed.  Rep 517 

National  Machine  Co.  v.  Thorn 25  Fed.  Rep 156 

National  Mfg.  Co. v.  Meyers 15  Fed.  Rep 23 

National  Pump  Cylinder  Co.  v. 

'Gunnison 17  Fed.  Rep 210 

National  Roofing  Co.  v.  Garwood.  .35  Fed.  Rep 26 

National  Rubber  Co.  «.  Rubber 

Shoe  Co 41  Fed.  Rep 258 

National  Spring  Co.  v.  Mfg.  Co 12  Blatch 198 

National  Typewriter  Co.  v.  Pope 

Mfg.  Co  56  Fed.  Rep 316 

National  Typographic  Co.  v.  New 

York  Typograph  Co 46  Fed.  Rep 172,  302,  509,  510 

Neale  ».  Neals 9  Wallace 450 

Neale  v.  Walker 1  Cranch's  Circuit  Court  Reports.  375 

Nellis  v.  McLanahan 6  Fisher 340 

Nellis  v.  Mfg.  Co 13  Fed.  Rep 340 

Nelson  v.  McMann 4  Bann.  &  Ard 325 

Nesmith  v.  Calvert 1  Woodbury  &  Minot 240 

Nevins  v.  Johnson 3  Blatch 347 

New  v.  Warren 22  Off.  Gaz 4,  203 

New  American  File  Co.  v.  Nich- 
olson File  Co 8  Fed.  Rep 145,  222 

New  Departure  Bell  Co.  v.  Bevin 

Mfg.  Co 64  Fed.  Rep 43,  62,  161,  302,  450 

New  Departure  Bell  Co.  v.  Hard- 
ware Co 62  Fed.  Rep 268 

New  Departure  Bell  Co.  v.  Hard- 
ware Specialty  Co 72  Off.  Gaz 479 

New  Home  Sewing  Machine  Co. 

t>.  Singer  Mfg.  Co 68  Fed.  Rep 164 


TABLE    OF    CITED    CASES. 
Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Newell  v.  West .13  Blatch 247 

New  York  v.  Ransom 23  Howard 425, 433 

New  York  &  Baltimore  Coffee 
Polishing  Co.  v.  New  York 

Coffee  Polishing  Co  9  Fed.  Rep 275,  448 

New  York  Belting  Co.  v.  Gutta 

Percha  Mfg.  Co 56  Fed.  Rep 515 

New  York   Belting  Co.  v.   New 

Jersey  Rubber  Co 137  U.  8 460 

New  York  Belting  Co. ».  Rubber  Co.30  Fed.  Rep 460 

New  York  Belting  Co.  v.  Rubber  Co.  32  Fed.  Rep 491 

New  York  Belting  Co.  v.  Rubber  Co.47  Fed.  Rep 321, 455 

New  York  Belting  Co  v.  Rubber  Co. 48  Fed.  Rep 60,  455 

New  York  Belting  Co.  v.  Rubber  Co. 53  Fed.  Rep .    309 

New  York  Filter  Co.  v.  Filter  Co.  .62  Fed.  Rep 489 

New  York  Filter  Co.  v.  Schwarz- 

walder 58  Fed.  Rep .  .265,  287,  449 

New  York   Grape   Sugar  Co.  «. 

American  Grape  Sugar  Co    . .  .10  Fed.  Rep 507,  513,  523 

New  York  Grape  Sugar  Co.  «. 

American  Grape  Sugar  Co 42  Fed.  Rep 545 

New   York   Grape  Sugar  Co.  ®. 

Buffalo  Grape  Sugar  Co 24  Fed.  Rep 458 

New  York   Packing  Co.  «.  Ma- 

gowan 27  Fed.  Rep 532 

New  York  Paper  Bag  Machine 
Co.  ®.  Union  Paper  Bag  Ma- 
chine Co 32  Fed.  Rep 236,  242 

New  York  Pharmical  Associa- 
tion «.  Tilden 14  Fed.  Rep 232,  360 

New  York  Sugar  Co.  v.  Sugar  Co .  .20  Fed.  Rep 450 

New  York  Sugar  Co.  «.  Sugar  Co.  .35  Fed.  Rep 489 

Ney  Mfg.  Co.  v.  Drill  Co 56  Fed.  Rep 508.  522 

Nichols  v.  Newell 1  Fisher 279 

Nicholson  Pavement  Co. «.  Jenkins.  14  Wallace 229 

Nicodemus  «.  Frazier 19  Fed.  Rep 33 

Nims  v.  Johnson 7  California 401 

Northwestern  Fire  Extinguisher 
Co.  0.  Philadelphia  Fire  Ex- 
tinguisher Co 1  Bann.  &  Ard. . .  .56,  59,  148,  151,  212, 

247,  323 
North  Western  Horse  Nail  Co. 

v.  Horse  Nail  Co 28  Fed.  Rep 295 

Norton  v.  California  Can  Co 45  Fed.  Rep 298,  300,  534 

Norton  v.  Eagle  Can  Co 57  Fed.  Rep 310,  458 


TABLE  .OF   CITED    CASES.  Ixxiii 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Norton  v.  Eagle  Can  Co 59  Fed.  Rep     405, 542 

Norton  v.  Eagle  Can  Co 61  Fed.  Rep 524 

Norton  v.  Jensen 49  Fed.  Rep 289,  301,  387 

Nourse  v.  Allen 3  Fisher 34o 

Noyes  v.  Willard 1  Woods 454 


O'Brien  v.  Gallagher 25  Conn 102 

Odell  v.  Stout 22  Fed.  Rep 57,  187,  201,  209 

Odiorne  v.  Winkley 2  Gallison 389 

Office  Specialty  Co.  v.  Globe  Co  . .  .65  Fed.  Rep 183 

Office  Specialty  Co.  v.  Winter- 
night  Mfg.  Co 67  Fed.  Rep 478,  480 

Olds  v.  Brown 41  Fed.  Rep 78, 164 

Olin  «.  Timken 155  U.  S 37,  44,  201 

Oliphant®.  Salem  Flouring  Mills  Co.  5  Sawyer .  278 

Oliver  ».  Chemical  Works 109  U.  S 261 

Oliver  v.  Piatt 3  Howard ; 238 

Onderdonk  v.  Fanning 5  Bann.  &  Ard 540 

Oregon    Imp     Co.    v.    Excels'ior 

Coal  Co 132  U.  S 370 

O'Reilly  v.  Morse 15  Howard.  .3, 7, 49, 58, 96, 147, 156, 158, 

178, 181,  182,  184, 187, 199,  208,  288, 
297,   300,   303,  364,  367,  398,  499 

Orr  t>.  Littlefield 1  Woodbury  &  Minot .  503,  506,  510, 525 

Osborn  «.  Judd 29  Fed.  Rep 19 

Osborne  v.  Glazier 31  Fed.  Rep 69 

Otis  Mfg.  Co.  v.  Crane  Mfg.  Co 27  Fed.  Rep 325 

Otley  D.  Watkins 36  Fed.  Rep 296,  306 

Overman    Wheel    Co.  v.   Elliott 

Cycle  Co 49  Fed.  Rep 350 


Pacific  Bank  v.  Robinson 57  California 245 

Pacific  Cable  Ry.  Co.  «.  Butte 

City  Ry.  Co 52  Fed.  Rep 270,  271 

Pacific  Cable  Ry.  Co.  •».  Butte 

City  Ry.  Co 55  Fed.  Rep 69,  85,  164.  303 

Pacific  Cable  Ry.  Co.  ®.  Butte 

City  Ry.  Co 58  Fed.  Rep 63,  165,  298,  367 

Pacific  Contracting  Co.  «.  Bing- 

ham 62  Fed.  Rep 37 

Pacific  Iron  Works  ».  Newhall ...  .34  Connecticut 257 

Packet  Co.  ®.  Sickles 5  Wallace 344 

Packet  Co.  «.  Sickles 19  Wallace 344,  347,  365,  425 

Page  v.  Buckley 67  Fed.  Rep 372 


TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Page  ®.  Ferry 1  Fisher 97,  387 

Page  v.  Telegraph  Co 18  Blatch 490,  517 

Page  Fence  Co.  ®.  Land 49  Fed.  Rep 164 

Paillard  v.  Bruno 29  Fed.  Rep  144 

Paine  v.  Snowden 46  Fed.  Rep 60 

Paine  v.  Trask 56  Fed.  Rep 384 

Palmer  v.  Corning 156  U.  S 23 

Palmer  v.  Gatling  Gun  Co 8  Fed.  Rep 167 

Palmer  t>.  Mills 57  Fed.  Rep 507,  523 

Paper  Bag  Cases 105  U.  S 226,  254,  325,  418 

Paper  Stock  Co. v.  Disinfecting  Co.  147  Mass 262 

Parham  v.  Buttonhole Mach.  Co. .  .4  Fisher 69,  167 

Parker  v.  Bigler 1  Fisher 385,  415 

Parker  v.  Brant 1  Fisher 445,  502,  504,  517 

Parker  v.  Dickinson 38  Fed.  Rep 44 

Parker  v.  Ferguson 1  Blatch 67 

Parker  v.  Hall 2  Fisher 338 

Parker  v.  Hatfleld 4  McLean 476,  485 

Parker  v.  Hawk 2  Fisher  338 

Parker  v.  Haworth 4  McLean 310,  355 

Parker  v.  Hulme 1  Fisher 36,  310,  435 

Parker  v.  Sears  1  Fisher 532 

Parker  ».  Stiles  5  McLean 182,  183 

Parker  v.  The  Judges 12  Wheaton 538 

Parker  &  Whipple  Co.  v.  Yale 

Clock  Co 123  U.  S 161,  197,  206,  209 

Parkhurst  ».  Kinsman 1  Blatch 528 

Parkhurst  v.  Kinsman 2  Blatch 472 

Parks  «.  Booth 102  U.  S 61,  99,  127,  415,  418,  499 

Parrott  v.  Wikoff .1  Louisiana  An'l 234 

Patent  Clothing  Co.  •».  Glover 141  U.  S 42,  498 

Pattee  Plow  Co.  v.  Kingman  & 

Co 129  U.  S 19,  207 

Patterson  ».  Duff 20  Fed.  Rep 25 

Patterson  v.  Kentucky 97  U.  S 135 

Patterson  v  Lyttle 11  Penn.  State 263 

Patterson  v.  Stapler 7  Fed.  Rep 443 

Paynes  v.  Coles 1  Munford 374,  484 

Pearce  v.  Mulford 102  U.  S 19 

Pearce  «.  Rice 142  U.  S 453 

Peard  v.  Johnson 23  Fed.  Rep 33,  298 

Pearl  v.  Ocean  Mills 2  Bann.  &  Ard 209 

Peck  v.  Bacon 18  Connecticut 237 

Peck  «.  Collins 103  U.  S 204 

Peek  v.  Frame 9  Blatch 436 

Peek  v.  Frame 5  Fisher 181,  184 


TABLE   OF   CITED   CASES.  Ixxv 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Pelton  v.  Waters 1  Bann.  &  Ard 62 

Pennington  v.  Gibson 16  Howard 405 

Pennington  v.  Hunt 20  Fed.  Rep 373 

Pennington  v.  King 7  Fed.  Rep 63 

Pennock  «.  Dialogue 2  Peters 79.  80,  88,  422 

Pennsylvania  Drill  Co.  ®.  Simpson. 29  Fed.  Rep 57 

Pennsylvania  Drill  Co.  «.  Simpson. 39  Fed.  Rep 540 

Pennsylvania  Railroad  Co.  v. 

Truck  Co 110  U.  S 42 

Pentlarge  v.  Beeston 14  Blatch 507,  514 

Pentlarge  v.  Beeston  1  Fed.  Rep 541 

Pentlarge  v.  Kirby 19  Fed.  Rep 279,  281 

Pentlarge  v.  New  York  Bushing 

Co  20  Fed.  Rep 162 

Pentlarge  v.  Pentlarge 19  Fed.  Rep 271 

People  v.  Sturtevant 5  Seldon 530 

Peoria  Target  Co.  v.  Cleveland 

Target  Co 47  Fed.  Rep 201 

Peoria  Target  Co.  v.  Cleveland 

Target  Co 58  Fed.  Rep 200 

Perkins  v.  Lumber  Co 51  Fed.  Rep 27 

Perrigo  v.  Spaulding 13  Blatch 265 

Perry  v.  Cornell 1  McArthur's  Patent  Cases 64 

Perry  v.  Corning 7  Blatch 239 

Perry  v.  Corning 6  Blatch  347,  436 

Perry  t>.  Foundry  Co 12  Fed.  Rep 33,  37 

Perry  v.  Starrett 3  Bann.  &  Ard 60,  309 

Peters  ?>.  Active  Mfg  Co 129  U.  8  28,  42 

Peters  v.  Hanson 129  U.  S 42 

Peterson  ®.  Chemical  Bank 32  N.  Y 324 

Pfanschmidt  v.  Mercantile  Co 32  Fed.  Rep 490 

Phelps  v.  Brown 4  Blatch 366,  397 

Phelps  ».  Classen 1  Woolworth. 234 

Phelps  v.  Mayer 15  Howard 423 

Philadelphia  &  Reading  Railroad 

Co.  v.  Derby 14  Howard 329 

Philadelphia  &  Trenton  R.  R. 

Co.  v.  Stimpson 14  Peters 66,  200,  421 

Philadelphia  Trust  Co.  v.  Edison 

Electric  Light  Co 65  Fed.  Rep 265,  518 

Philip  v.  Nock 17  Wallace 425,  426,  438 

Phillips  v.  Comstock 4  McLean. .  .1 365 

Phillips  v.  Detroit Ill  U.  S  33,  390 

Phillips  t>.  Detroit 3  Bann.  &  Ard 539,  541 

Phillips  v.  Page 24  Howard 27,  363 

Phipps  v.  Yost 26  Fed.  Rep 34 


Ixxvi  TABLE    OF    CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Phoenix  Caster  Co.  0.  Spiegel 133  U.  S 17 

Pickering  0.  McCullough 104  U.  S 31,  59 

Picquet  v.  Swan 3  Mason -322 

Pierce  v.  West's  Executors 1  Peters'  Circuit  Court  Reports. .  471 

Pierson  0  Screw  Co 3  Story 137,  140 

Pike  0.  Potter 3  Fisher 154 

Piper  v.  Brown 1  Holmes 544,  559,  563,  567 

Pirkl  v.  Smith 42  Fed.  Rep 439 

Pitts  v.  Hall 2  Blatch 47,  92,  235,  248,  397,  464 

Pitts  0.  Jameson 15  Barbour  243 

Pitts®.  Wemple  ...IBissell 134,  165,  309 

Pitts  ».  Wemple 2  Fisher 67,  288 

Pitts  v.  Whitman 2  Story 237,  288 

Pittsburgh  Reduction  Co.  0.  Alum- 
inum Co 55  Fed.  Rep 62,  70,  79,  155 

Pittsburgh  Reduction  Co.  0.  Alum- 
inum Co 64  Fed.  Rep 490 

Planing  Machine  Co.  v.  Keith 101  U.  S.28, 79, 80,  82,  124,  125,  363,  461 

Platt  0.  Fire  Extinguisher  Mfg.  Co. 59  Fed.  Rep 231,  258 

Plimpton  0.  Winslow 14  Fed.  Rep 86 

Pohl0.  Anchor  Brewing  Co 134  U.  S 144 

Pohl0.  Heyman 58  Fed.  Rep J44 

Poillon  0.  Schmidt 3  Fisher 5 

Pomace  Holder  Co.  0.  Ferguson  . .  119  U.  S 23 

Pontiac  Boot  Co.  0.  Merino  Shoe 

Co 31  Fed.  Rep 240 

Pope  Mfg.  Co.  0.  Clark 46  Fed.  Rep 230,  325 

Pope  Mfg.  Co.  0.  G.  &  J.  Mfg.  Co.  .144  U.  S. .  .23,  63,  75,  230,  251,  259,  302 

Pope  Mfg.  Co.  0.  G.  &  J.  Mfg.  Co.  .34  Fed.  Rep 303 

Pope  Mfg  Co.  0.  Johnson 40  Fed.  Rep 521 

Pope  Mfg.  Co.  0.  Owsley 27  Fed.  Rep 257,  258 

Poppenhusen  0.  Comb  Co  2  Fisher 72 

Poppenhusen  0.  Falke 4  Blatch 334 

Poppenhusen  0.  Falke  5  Blatch 45 

Poppenhusen  0.  Falke 2  Fisher 508,  519 

Porter  Needle  Co.  0.  Needle  Co  . .  .17  Fed.  Rep 253 

Porter  Needle  Co.  0.  Needle  Co . .  .22  Fed.  Rep 430 

Post  0.  Hardware  Co 25  Fed.  Rep 351 

Post  0.  Hardware  Co 26  Fed.  Rep 26 

Potts  0.  Creager 155  U.  S 24,  27,  43,  44,  161 

Potter  0.  Braunsdorf 7  Blatch 222,  223 

Potter  0.  Crowell 3  Fisher 328,  516,  533,  534 

Potter  v.  Dixon 5  Blatch 272 

Potter  0  Dixon  2  Fisher 120 

Potter  0.  Fuller 2  Fisher 507,  522 

Potter  0.  Holland  . .  4  Blatch 212,  213,  325 


TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Potter  v.  Holland 1  Fisher 522 

Potter  v.  Mack 3  Fisher 532,  534 

Potter  v.  Muller 1  Bond 541 

Potter  v.  Stewart 18  Blatch 208,  300 

Potter  v.  Whitney 1  Lowell 183 

Powder  Go.  v.  Powder  Works 98  U.  S 207,  466 

Power  v.  Semmes 1  Cranch's  Circuit  Court  Reports..  417 

Pratt  v.  Mareen 25  111.  App 244 

Pratt  v   Sencenbaugh 64  Fed.  Rep 70,  480 

Pratt  0.  Wilcox  Mfg.  Co 64  Fed.  Rep 256 

Pratt  «.  Wright 65  Fed.  Rep 480 

Preston  v.  Manard 116  U.  S ,-..'.     29 

Prevost  «.  Gratz 1  Peter's  Circuit  Court  Reports . .  490 

Priestly  v.  Montague 47  Fed.  Rep 51 

Prime  v.  Mfg.  Co 16  Blatch 236,  237 

Proctor  ®.  Brill 16  Fed.  Rep 184 

Prouty  v.  Ruggles 16  Peters 101,  163,  296,  404 

Puetz  v.  Bransford 31  Fed.  Rep 229 

Pullman  v.  Railroad  Co 5  Fed.  Rep 515 

Pullman  Palace  Car  Co.  v.  Wag- 
ner Palace  Car  Co 44  Fed.  Rep 508,  518 

Purnell  v.  Daniell 8  Iredell's  Equity  Reports 503 

Putnam  v.  Bottle  Stopper  Co 38  Fed.  Rep 479 

Putnam  v.  Yerrington 2  Bann.  &  Ard 208,  479 


Railroad  Co.  v.  Duboise 12  Wallace 156,  263,  274 

Railroad  Co.  v.  Howard 7  Wallace 339 

Railroad  Co.  v.  Mellon 104  U.  S 166 

Railroad  Co.  v.  Smith 21  Wallace 421 

Railroad  Co.  v.  Trimble 10  Wallace 229,  233 

Railway  Co..«.  Sayles  97  U.  S.  72,  118,  167,  297,  301,  366, 404 

Railway  Mfg.  Co.  v.  Railroad  Co.  .26  Fed.  Rep 488 

Railway  Mfg.  Co.  v.  Railroad  Co .  .30  Fed.  Rep 298 

Railway  Register  Co.  v.  Railroad 

Co 23  Fed.  Rep  191 

Ransom  v.  New  York 1  Fisher 50,  62,  92,  127 

Rapid  Store  Service  Ry.  Co.  v. 

Taylor 43  Fed.  Rep 43,  99,  155,  156,  303 

Rapp  v.  Kelling 41  Fed.  Rep 230,  326 

Raymond  v.  Woven  Hose  Co 39  Fed.  Rep 509 

Read  v.  Bowman 2  Wallace 234 

Read  v.  Miller 2  Bissell 362 

Reay  v.  Raynor 19  Fed.  Rep. 4,  455,  532 

Reckendorfer  ®.  Faber 92  U.  S 31,  160,  390 

Redway  v.  Ohio  Stove  Co 38  Fed.  Rep 19,  60,  309 


Ixxviii  TABLE   OF   CITED   CASES. 

Names  of  Cases.                                               Where  reported.                      Pages  in  this  book. 
Reece  Button  Hole  Machine  Co. 
0.   Globe  Button    Hole  Ma- 
chine Co 61  Fed.  Rep 164,  298,  303 

Reed  v.  Chase 25  Fed.  Rep 297 

Reed  0.  Cutter 1    Story 66.  121,  184,  186 

Reedy  v.  Scott 23  Wallace  472 

Reeves  v.  Bridge  Co 5  Fisher 54 

Reeves  v.  Keystone  Bridge  Co 2  Bann.  &  Ard 489,  490 

Regan  Vapor  Engine  Co.  0.  Pa- 
cific Gas  Engine  Co 47  Fed.  Rep 238 

Rein  v.  Clayton 37  Fed.  Rep 147 

Reiter  v.  Jones 35  Fed  Rep 45 

Reutgen  v.  Kanowrs  1  Washington 330 

Reynes  v.  Dumont 130  U.  S 457 

Reynolds  v.  Standard  Paint  Co 68  Fed  Rep 163 

Rhodes  0.  Lincoln  Press  Drill  Co.  .64  Fed.  Rep 173 

Rice  v.  Boss . .  .46  Fed.  Rep 250,  251 

Rich  v.  Lippencott 2  Fisher 66.  306 

Rich  v.  Ricketts 7  Blatch 338 

Richards  v.  Elevator  Co 158  U.  S 33,  459 

Richards  v.  Railroad  Co 40  Fed.  Rep 34,  460 

Richards  0    West 2  Green's  Chancery 530 

Richardson  v.  Hicks 1   Me  Arthur's  Patent  Cases 395 

Richmond  v.  Atwood 52  Fed.  Rep 486,  487,  491  - 

Riddick  0.  Moore 65  N.  C 324 

Riddle  0.  Mandeville 5  Cranch 322 

Rifle  &  Cartridge  Co.  0.  Arms  Co.  .118  U.  S 78,  79.  81,  82 

Ring  Refrigerator  Co.  0.  St.  Louis 

Mfg   Co 67  Fed.  Rep 330,  332 

Ripley  0.  Edison  Glass  Co 49  Fed.  Rep 439,  552 

Risdon  Locomotive  Works  0.  Me- 

dart 158  U.  S 6,  19,  26, 459,  460 

Ritter  0.  Serrell 2  Blatch 243 

Robbins  0.  Columbus  Watch  Co . .  50  Fed.  Rep 332 

Roberts  0.  Buck  .  .    1  Holmes 462 

Roberts  0.  Dickey 4  Fisher  5,  55 

Roberts  0.  Harnidon 2  Cliff 300,  309 

Roberts  0.  Nail  Co  53  Fed.  Rep 99,  156 

Roberts  0.  Roter 5  Fisher 287 

Roberts  0.  Ryer 91  U.  S 41,  161,  165 

Roberts  0.  Schuyler 12  Blatch 410 

Roberts  0.  Walley .14  Fed.  Rep 385 

Robinson  0.  Randolph 4  Barm.  &  Ard 517,  528 

Rochester    Coach    Lace    Co.    0. 

Schaefer 46  Fed.  Rep 6,  69 

Rocker  Spring  Co.  0.  Thomas 68  Fed.  Rep 118 


TABLE   OF   CITED    CASES. 
Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Rodebaugh  «.  Jackson 37  Fed.  Rep 40 

Roemer  «.  Bernheim 132  U.  S        490,  497 

Roemer  v.  Neumann 26  Fed.  Rep 340,  373 

Roemer  «.  Peddle 132  U.  S 172 

Roemer  v.  Peddie 27  Fed.  Rep 162,  164 

Roemer  «.  Simon  95  U.  S 461,  462 

Roemer  v.  Simon 2  Bann.  &  Ard 493 

Roemer  «.  Simon 20  Fed.  Rep 294 

Roemer  v.  Simon 31  Fed.  Rep 431 

Rogers  «.  Abbot 4  Washington 447,  504 

Rogers  Typograph  Co.  v.  Mergen- 

thaler  Co 64  Fed.  Rep 303 

Roller  Mill  Patent 156  U.  S 167,  g98 

Roosevelt  v.  Electric  Co 20  Fed.  Rep 253 

Roosevelt  v.  Telegraph  Co 33  Fed.  Rep 299 

Root  «.  Railway  Co 105  U.  S  ...  .326,  347,  436,  442,  454,  546 

Root  v.  Sontag 47  Fed.  Rep 460 

Root  v.  Third  Avenue  Railroad  Co.146  U.  S 84 

Rose  v.  Hurley 39  Indiana 240 

Rosenwasser  v.  Spieth 129  U.  S 54 

Ross  v.  Ft.  Wayne 58  Fed.  Rep 350 

Ross  v.  Ft.  Wayne 63  Fed.  Rep 472,  473 

Ross  v.  Montana  Ry.  Co 45  Fed.  Rep 432 

Ross  v.  Prentiss 4  McLean 492,  493 

Roth  v.  Keebler 30  Fed.  Rep 23 

Rowe  v.  Blanchard 18  Wisconsin 71,  395 

Rowell  «.  Lindsay 113  U.  S 163,  296,  298 

Royer  v.  Belting  Co 135  U.  S 408 

Royer  v.  Belting  Co 40  Fed.  Rep 40 

Royer  v.  Coupe 146  U.  S 172,  287 

Royer  v.  Coupe 29  Fed.  Rep 50,  107,  294,  310 

Royer  v.  Coupe 38  Fed.  Rep 40 

Royer  «.  Mfg.  Co 20  Fed.  Rep 42,  403 

Royer  v.  Roth 132  U.  S 33 

Rubber  Co.  ».  Goodyear 9  Wallace 101,  157,  169,  198,  201, 

209,  212,  225,  260,  261,  322,  323,  462, 
494, 544,  546,  547,  548,  549,  551,  553 
Rubber  Trimming  Co.  v.  Rubber 

Comb  Co 35  Fed.  Rep 42,  478 

Rude  v.  Westcott 130  U.  S 426,  428,  443 

Ruggles  «.  Eddy 10  Blatch 223 

Ruggles  v.  Eddy 11  Blatch 490 

Rumford    Chemical     Works    v. 

Hecker   2  Bann.  &  Ard 331,  373,  479,  532 

Rumford  Chemical  Works  v.  Vice .  14  Blatch 516,  522,  534 

Russell  v.  Barney 6  McLean 405 


1XXX  TABLE    OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Russell  v.  Dodge 93  U.  S  . . .    208 

Russel  v.  Hyde 39  Fed.  Rep. . 516 

Russell  ®.  Kern 58  Fed.  Rep 230,  243 

Russell  v.  Kern 64  Fed.  Rep 370,  466 

Russell  v.  Kern 72  Off.  Gaz 163,  456 

Russell  v.  Newark  Machine  Co. . . '.55  Fed.  Rep 278,  279 

Russell  «.  Place 94  U.  S 157 

Russell  v.  Place 9  Blatch 410,  436 

Russell  v.  Place    5  Fisher 435 

Ryan  v.  Gould 32  Fed.  Rep 491 

Ryan  v.  Hard 145  U.  S 23,26 

Ryan  v.  Lee ". 10  Fed.  Rep 245 

Sackett  «.  Smith 42  Fed.  Rep 171 

Salt  Lake  City  v.  Hollister 118  U.  S 333 

Sanford  v.  Messer 1  Holmes 250,  325 

San    Francisco     Bridge    Co.    v. 

Keating 68  Fed.  Rep 34,  407 

Sargent  v.  Burgess 129  U.  S 298 

Sargent  «.  Covert 152  U.  S 23 

Sargent  ®.  Larned 2  Curtis 257 

Sargent  v.  Lock  Co 114  U.  S 163,  166,  296 

Sargent  «.  Mfg.  Co 17  Blatch 431 

Sargent  ®.  Seagrave 2  Curtis 509,  510,  511 

Sarven  v.  Hall 9  Blateh 298 

Saunders  v.  Allen 60  Fed.  Rep 54 

Sauvinet  v.  Poupono 14  Louisiana 448 

Sawyer    Spindle    Co.  ®.   Eureka 

Spindle  Co 33  Fed.  Rep 205 

Sawyer    Spindle    Co.    v.    Morri- 
son Co 52  Fed.  Rep 294 

Sawyer  Spindle  Co.  «.  Taylor 56  Fed.  Rep. 508,  518 

Saxe  ®.  Hammond 1  Holmes 331 

Saxton  v.  Aultman 15  Ohio  State 237 

Sayles  v.  Dubuque  &  Sioux  City 

R.  R.  Co 5  Dillon 221,223,  241,  347 

Sayles  v.  Grand  Trunk  Railway  Co. Manuscript,  1879 318 

Sayles  v.  Lake  Shore  Railway  Co.  .Manuscript,  1878 339 

Sayles  v.   Oregon   Central   Rail- 
road Co  4  Bann.  &  Ard 376 

Sayles  v.  Railway  Co 2  Fisher 82 

Sayles  «.  Railway  Co 4  Fisher 59,  67 

Sayles  v.  Richmond,  Fredericks- 
burg  &  Potomac  R.  R.  Co 4  Bann.  &  Ard 345 

Sayre  v.  Scott 55  Fed.  Rep 547 

Schillinger  v.  Brewing  Co 24  Off.  Gaz 210 


TABLE   OF   CITED    CASES. 

x 
Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Schillinger  v.  Cranford 37  Off.  Gaz 298 

Schillinger  t>.  Gunther 17  Blatch 181,  185 

Schillinger  ».  Gunther 2  Bann.  &  Ard 540,  542 

Schillinger  v.  United  States 155  U.  S    320 

Schlicht  &  Field  Co.  v.  Sewing 

Machine  Co 36  Fed.  Rep 51,  397 

Schmid  «.  Mfg.  Co 37  Fed.  Rep 34,  42,  414 

Schneider  v.  Bassett 13  Fed.  Rep 507,  511 

Schneider  v.  Pountney   21  Fed.  Rep 331 

Schneider  v.  Thill 5  Bann.  &  Ard 155 

Schoerken  v.  Swift  &  Courtney  & 

Beecher  Co 7  Fed.  Rep 392 

Schott  ®.  Benson 1  Blatch 418 

Schreiber  v.  Sharpless 17  Fed.  Rep 280 

Schreiber  &  Sons  Co.  *.  Grim 65  Fed.  Rep 42,  460 

Schultz  Belting  Co.  v.  Belting  Co.  .40  Fed.  Rep 62 

Schuyler  Electric  Co.  v.  Electric 

Supply  Co 66  Fed.  Rep 302 

Schwarzwalder  «.  Filter  Co 66  Fed.  Rep 185,  284 

Scott  v.  Watson 46  Maine 327 

Screw  Co.  v.  Sloan 1  McArthur's  Patent  Cases 19 

Seabury  v.  AmEnde 152  U.  S 153,  431,  549 

Searls  v.  Bouton 12  Fed.  Rep 260 

Searls  v.  Merriam 22  Off.  Gaz 39 

Searls  v.  Railroad  Co 2  Woods 537 

Searls  v.  Worden 11  Fed.  Rep 479 

Sears  «.  United  States 1  Gallison 281 

Sedgwick  v.  Cleveland 7  Paige 472 

Seeley  v.  Brush  Electric  Co 44  Fed.  Rep 298 

Seibert  Oil    Cup   Co.   «.    Lubri- 
cator Co 34  Fed.  Rep 250,  258,  262,  459 

Seibert  Oil  Co.  v.  Powell  Co 35  Fed.  Rep 143 

Selden  v.  Gas  Burner  Co 19  Blatch 148 

Selden  v.  Gas  Burner  Co 9  Fed.  Rep 200,205,211,212 

Sessions  v.  Gould 49  Fed.  Rep 507, 515 

Sessions  v.  Gould 60  Fed.  Rep 479 

Sessions  v.  Gould 63  Fed.  Rep.  % 541 

Sessions  «.  Romadka 145  U.  S 44,  176,  178,  186,  246,  302, 

553,  556,  558 

Sewall  «.  Jones 91  U.  S 155,  171 

Sewing  Machine  Co.  v.  Frame 24  Fed.  Rep 25,  197 

Seymour  ®.  Marsh 6  Fisher 395 

Seymour  v.  McCormick 16  Howard 344,  425,  435 

Seymour  v  McCormick 19  Howard 183,  392 

Seymour  v.  Osborne 11  Wallace.  .55,  72,  103,  130,  133,  156, 

158,  164.  200,  208,  295.  340,  400,  461 


Ixxxii  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported,  Pages  in  this  book. 

Shannon  ®.Bruner 33  Fed.  Rep 547 

Sharp  v.  Reissner 119  U.  S 163,  296 

Sharp  ti.  Reissner 9  Fed.  Rep 470 

Shaver  ®.  Mfg.  Co 30  Fed.  Rep  309 

Shaw  v.  Boylan 16  Indiana 335 

Shaw  v.  Cooper 7  Peters 91 

Shaw  ®.  Lead  Co 11  Fed.  Rep 72,  204,  322 

Shaw  Stocking  Co.  «.  Pearson 48  Fed.  Rep  173 

Shaw  Valve  Co.  ®.  New  Bedford. .  .19  Fed.  Rep 247 

Sheffield  Ry.  Co.  ®.  Gordon  .    151  U.  S 564,  565 

Shelly  v.  Brannan 4  Fisher 525 

Shenfleld  v.  Mfg.  Co 137  U.  S 23 

Shenfield  «.  Mfg.  Co. 27  Fed.  Rep 42 

Shepard  ®.  Carrigan 116  U.  S 163,  171,  296 

Sherman  v.  Nutt 35  Fed.  Rep 515 

Shields  v.  Barrow 17  Howard 450 

Shirley  v.  Sanderson 8  Fed.  Rep 69 

Shoemaker  ®.  Merrow 61  Fed.  Rep 295 

Shoup  v.  Henrici 2  Bann.  &  Ard 59 

Shute  v.  Morley  Co 64  Fed.  Rep  486 

Shuter  v.  Davis 16  Fed.  Rep 45 

Sickles  ®.  Borden 3  Blatch 298,  300 

Sickles  B.  Borden 4  Blatch 530,  541 

Sickles  v.  Mfg.  Co 1  Fisher 347 

Sickles  v.  Mitchell  3  Blatch 507,  522 

Sickles  v.  Tileston 4  Blatch 522 

Siebert  Oil  Cup  Co.  v.  Beggs 32  Fed.  Rep 320 

Siemens'  Adm'r  v.  Sellers 123  U.  S 54,  147 

Silsby®.  Foote 14  Howard 157,  185,  296,  362,  389 

Silsby  v.  Foote 20  Howard .'....399,  485,  495 

Silsby®.  Foote 1  Blatch 485 

Simmonds  ®.  Morrison 44  Fed.  Rep 69 

Simmons  ®.  Standard  Oil  Co 62  Fed.  Rep 70 

Simons  Mach.  Co.®.  Knox 39  Fed.  Rep 479 

Simpson®.  Davis 12  Fed.  Rep 60 

Simpson  ®.  Davis 22  Fed.  Rep 442,  547 

Simpson  ®.  Pond 2  Curtis 280 

Sinclair  ®.  Backus 5  Bann.  &.Ard 85 

Singer  ®.  Braunsdorf 7  Blatch 64,  118 

Singer  ®.  Walmsley 1  Fisher 154,  182,  183,  288,  310 

Singer  Mfg.  Co.  ®.  Brill 54  Fed.  Rep 295,383 

Singer  Mfg.  Co.  ®.  Foundry  Co 34  Fed.  Rep 254 

Singer  Mfg.  Co.  ®.  Schenck 68  Fed.  Rep 70 

Singer  Mfg.  Co.  ®.  Wilson  Mach. 

Co 38  Fed.  Rep 455 

Sisson®.  Gilbert....  ,...9  Blatch ...  ,     89 


TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Sizer  ®.  Many 16  Howard 418 

Slack  v.  Walcott 3  Mason 474 

Slawson  ®.  Railroad  Co 107  U.  S 19,  35,  390,  460 

Smead®.  School  District 44  Fed.  Rep 186 

Smith  v.  Baker's  Administrators...!  Bann.  &  Ard 347,  436 

Smith  v.  Davis 34  Fed.  Rep 69 

Smith  v.  Dental  Vulcanite  Co 93  U.  S 27,  44,  80,  124,  165 

Smith  v.  Downing 1  Fisher 288,  289 

Smith®.  Felt 50  Barbour 329 

Smith  v.  Halkyard 16  Fed.  Rep 507 

Smith®.  Halkyard 19  Fed.  Rep 540 

Smith®.  Macbeth 67  Fed.  Rep 164 

Smith®.  Mercer 3  Penn.  L.  J.  Reports 213 

Smith  ®.  Merriam 6  Fed.  Rep 200 

Smith®.  Murray 27  Fed.  Rep 29 

Smith  v.  Nichols 21  Wallace 37,  185 

Smith  ®.  Saddle  Co 148  U.  S 17,  19,  42 

Smith  ®.  Selden 1  Blatch 234 

Smith  v.  Stewart 55  Fed.  Rep 50,  309,  439,  552 

Smith  ®.  United  States 1  Gallison 281 

Smith  ®.  Walton 51  Fed.  Rep 277 

Smith  ®.  Walton 56  Fed.  Rep 277 

Smith®.  Woodman 8  Foster 343 

Smith  &  Davis  Mfg.  Co.®.  Mellon. 58  Fed.  Rep 87 

Smith  &  Egge  Mfg.  Co.  ®.  Bridge- 
port Chain  Co 46  Fed.  Rep 167 

Smith  &  Griggs  Mfg.  Co.  ®.  Spraguel23  U.  S 85,  86,  108 

Snow  v.  Railway  Co 121  U.  S 295 

Snow®.  Taylor 4  Bann.  &  Ard 23 

Snyder®.  Bunnell 29  Fed.  Rep 341 

Solomons  ®.  United  States 137  U.  S 136,  230  263 

Solomons  ®.  United  States 21  and  22  Court  of  Claims 231,  263 

Sone®.  Palmer 28  Missouri 237 

Southard  ®.  Russell 16  Howard 492,  494 

Spaeth  v.  Barney 22  Fed.  Rep 352 

Sparhawk  ».  Wills 5  Gray 567 

Sparkman  ®.  Higgins 1  Blatch 50,  529 

Spauluing  ®.  Page 1  Sawyer 265 

Spaulding  ®.  Tucker 4  Fisher 417 

Spaulding  ®.  Tucker Deady 387 

Spering's  Appeal 71  Pennsylvania  State 336 

Sperry  v.  Ribbans 3  Bann.  &  Ard 521 

Spill  ®.  Celluloid  Mfg.  Co 21  Fed.  Rep 42,488 

Spill®.  Mfg.  Co 28  Fed.  Rep 491 

Sprague  ®.  Mfg.  Co 12  Fed.  Rep 84 

Spring  ®.  Sewing  Machine  Co 4  Bann.  &  Ard 513,  521 


TABLE   OF   CITED   CASES. 

Names  of  Cases.  Where  reported .  Pages  in  this  book. 

Springs.  Sewing  Machine  Co 13  Fed.  Rep 457 

Stafford  v.  Hair  Cloth  Co 2  Cliff 410 

Stahlfl.  Ertel 62  Fed.  Rep 531,  539,  542 

Stable  Williams 52  Fed.  Rep 172 

Stahl  0.  Williams 64  Fed.  Rep 300 

Stainthorp  ®.  Humiston 2  Fisher 523,  525 

Stainthorp  «.  Humiston 4  Fisher 57 

Standard  Elevator  Co.  •».  Crane 

Elevator  Co 56  Fed.  Rep 506,  515 

Standard  Folding  Bed  Co.  v.  Os- 

good 51  Fed.  Rep 302 

Standard  Folding  Bed  Co.  v.  Os- 

good 58  Fed.  Rep 299 

Standard  Oil  Co.  v.  Southern  Pa- 
cific Co 42  Fed.  Rep 460 

Standard  Oil  Co.  v.  Southern  Pa- 
cific Railroad  Co 48  Fed.  Rep 33 

Standard  Oil  Co.  v.  Southern  Pa- 
cific Co 54  Fed.  Rep 332 

Standard  Paint  Co.  v.  Bird 65  Fed.  Rep 165,  307 

Star  Salt  Caster  Co.  ».  Grossman... 4  Bann.  &  Ard 442 

Starling  v.  St.  Paul  Plow  Works  ...32  Fed.  Rep 256 

Starling  v.  Weir  Plow  Co 49  Fed.  Rep 480 

Starling  v.  Weir  Plow  Co 53  Fed.  Rep 480 

Steam  Gauge  &  Lantern  Co.  ®. 

Kennedy 41  Fed.  Rep 186 

Steam  Gauge  &  Lantern  Co.  v. 

Mfg.  Co 28  Fed.  Rep 299 

Steam  Gauge  &  Lantern  Co.  v. 

Mfg.  Co 29  Fed.  Rep 288 

Steam  Gauge  «fe  Lantern  Co.  ». 

Meyrose 27  Fed.  Rep 374 

Steam  Gauge  &  Lantern  Co.   v. 

Miller  8  Fed.  Rep 513 

Steam  Gauge  &  Lantern  Co.  v. 

Miller  M  Fed.  Rep 528 

Steam  Gauge  &  Lantern  Co.  «. 

Rogers 29  Fed.  Rep 302 

Steam  Gauge  &  Lantern  Co.  v. 

Williams 42  Fed.  Rep 34 

Steam  Gauge  &  Lantern   Co.  v. 

Williams 50  Fed.  Rep 170 

Steam  Stone  Cutter  Co.  v.  Mfg.  Co.  17  Blatch 265,  545,  548 

Steam  Stone  Cutter  Co.  v.  Sheldon  10  Blatch 252,  259 

Steam  Stone  Cutter  Co.  v.  Sheldon.15  Fed.  Rep 345 

Steam  Stone  Cutter  Co.  v.  Short- 
sleeves  16  Blatch 251,  252 


TABLE    OF   CITED   CASES.  1XXXV 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Stearns  «.  Beard 46  Fed.  Rep 60 

Stearns  ®.  Davis 1  McArthur's  Patent  Cases 50 

Stearns  ®.  Phillips 43  Fed.  Rep 331 

Stegner  v.  Blake 36  Fed.  Rep 161,  483 

Steiger®.  Heidelberger 4  Fed.  Rep 328 

Stein  v.  Goddard 1  McAlister 320 

Steiner  Extinguisher  Co.  ®.  Adrian .  52  Fed.  Rep 42, 161 

Steiner  Extinguisher  Co.  ®.  Adrian.  59  Fed.  Rep 42 

Stephens®.  Cady 14 Howard 136,  253 

.Stephens  ®.  Felt 2  Blatch 434 

Stephens  ®.  Salisbury 1  McArthur's  Patent  Cases 65,  66 

Stephenson  v.  Railroad  Co 114  U.  S 19,  33 

Stephenson  ®.  Railroad  Co 14  Fed.  Rep 59 

Sterrick  v.  Pugsley 1  Central  Law  Journal 504 

Stevens  ®.  Baltimore  &  Ohio  Rail- 
road Co 6  Fed.  Rep 347 

Stevens  ®.  Gladding 17  Howard 136,253 

Stevens  ®.  Kansas  Pacific  Rail- 
way Co 5  Dillon 347 

Stevens®.  Pritchard 2  Bann.  &  Ard 160 

Stevenson  v.  Magowan 31  Fed.  Rep 170 

Stewart®.  Tenk 32  Feti.  Rep 50 

Stiles®.  Rice 29  Fed.  Rep 171 

Still  ®.  Reading 20  Off.  Gaz 326,  355 

Stillwell  &  Bierce    Mfg.   Co.   ®. 
The  Cincinnati  Gas  Light  & 

Coke  Co IBann.  &  Ard 57 

Stimpson  ®.  Pond 2  Curtis 281 

Stimpson  ®.  Railroad  Co 4  Howard 200,  215 

Stimpson  ®.  Railroads 1  Wallace  Jr 410,  438 

Stimpson  ®.  Rogers 4  Blatch 148,  443 

Stimpson®.  Woodman 10  Wallace 38 

Stirrat  ®.  Excelsior  Mfg.  Co 61  Fed.  Rep 167 

Stitt®.  Railroad  Co 22  Fed.  Rep 67 

St.  Germain  ®.  Brunswick 135  U.  S 42 

St.  Louis  Stamping  Co.  ®.  Quinby.4  Bann.  &  Ard 154 

St.  Paul  Plow  Works  v.  Starling  ...140  U.  S 257,  258,  395,  411 

Stohlmann  ®.  Parker  53  Fed.  Rep 25 

Stokes  Bros.  Mfg.  Co.  v.  Heller 56  Fed.  Rep 481 

Stonementz  Mach.  Co.  ®.  Brown 

Mach.  Co 46  Fed.  Rep 268 

Stonementz  Mach.  Co.  ®.  Brown 

Mach.  Co 57  Fed.  Rep 162,  267 

Story®.  Livingston 13Peters 563 

Stow  ®.  Chicago 104  U.  S 54 


TABLE    OF   CITED   CASES. 
Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Stow  v.  Chicago 3  Bann.  &  Ard 29,  36 

Strait®.  Harrow  Co 51  Fed.  Rep 448 

Streat  ®.  White 35  Fed.  Rep 50 

Strobridge®.  Lindsay 6  Fed.  Rep 303,  542 

Stuart  ®.  Thorman 37  Fed.  Rep 517 

Studebaker  Mfg.  Co  «.  Illinois 

Bolt  Co 42  Fed.  Rep 23,  460 

Sturges  ®.  Van  Hagan 6  Fisher 272 

Sturgis  ®.  Knapp 33  Vermont 531 

Stutz®.  Armstrong 20  Fed.  Rep 33 

Stutz®.  Armstrong 25  Fed.  Rep 265 

Suffolk  Co  ®.  Hayden  3  Wallace.63,  64, 161,  162,  266,  424,  432 

Sugar  Apparatus  Co.  ®.  Yaryan 

Mfg.  Co . 43  Fed.  Rep 35,  386 

Sugar  Refinery  Co.  ®.  Mathiesson...'3  Cliff 563 

Sullivan®  Judah 4  Paige 530* 

Sullivan  ®.  Railroad  Co 94  U.  S 459 

Sutro  Bros.  Braid  Co.  ®.  8chloss....44  Fed.  Rep 309 

Sutter  ®.  Robinson 119  U.  S 171 

Suydam  ®.  Day , 2  Blatch 242 

Swift®.  Jenks 29  Fed.  Rep 268 

Swift®.  Whisen .'...2  Bond 212 

Sykes  ®.  Manhattan  Co 6  Blatch 525 

S.  S.  White  Dental  Mfg.  Co.  ®. 

Johnson 56  Fed.  Rep 516< 


Tack  Co.  ®.  Mfg.  Co 109  U.  S 23,  33 

Tannage  Patent  Co.  ®.  Zahn 66  Fed.  Rep 96,  152 

Tarr  ®.  Folsom 1  Bann.  &  Ard 127 

Tatham  ®.  Lowber 4  Blatch 265,  545 

Tatum  ®.  Gregory 51  Fed.  Rep 431 

Taylor®.  Archer 8  Blatch 175,  180 

Taylor  ®.  Porter 4  Hill  (N.  Y.) 131, 138 

Teese  ®.  Huntingdon 23  Howard 362,  436,  438,  462 

Telephone  Cases  126  U.  S 4, 10,  19,  43,  95,  145,  157, 

164,  303 

Temple  Pump  Co.  ®.  Mfg.  Co 30  Fed.  Rep 164 

Temple  Pump  Co.  ®.  Mfg.  Co 31  Fed.  Rep 540 

Terhune  ®.  Phillips 99  U.  S 26- 

Terry  Clock  Co.  «.  New  Haven 

Clock  Co 4  Bann.  &  Ard 25 

Thatcher  Heating  Co.  ®.  Burtis 121  U.  S 33 

Thayer  ®.  Hart 20  Fed.  Rep 69- 

Theberath  ®.  Trimming  Co 15  Fed.  Rep 17,87 

The  Baltimore  ...  , . . .  8  Wallace ...  . .  41 5. 


TABLE    OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

The  Commander-m-Chiaf 1  Wallace 565,  567 

The  Fire  Extinguisher  Case 21  Fed.  Rep 217 

The  Santa  Maria 10  Wheaton 497 

Thomas  v.  Harvie's  Heirs 10  Wheaton 492 

Thomas  •».  Quintard 5  Duer 239 

Thompson  v.  Boisselier 114  U.  S 19 

Thompsons  Donnell  Mfg.  Co 40  Fed.  Rep 161,479 

Thompson  v.  Gildersleeve 34  Fed.  Rep 161 

Thompson  w.  Mendelsohn 5  Fisher 516 

Thompson  v.  Wooster 114  U.  S 198 

Thomson    v.   Citizens'    National 

Bank 53  Fed.  Rep : 131 

Thomson  Electric  Welding  Co.  «. 

Two  Rivers  Mfg.  Co 63  Fed.  Rep 509 

Thomson-Houston  Co.  v.  Elmira 

Ry.  Co 69  Fed.  Rep 163 

Thomson-Houston    Electric  Co. 

0.  Western  Electric  Co 65  Fed.  Rep 23 

TibbeMfg.  Co.  «.  Heineken 37  Fed.  Rep 513 

Tilghman  «  Mitchell 9  Blatch 222,  225 

Tilghman  ».  Mitchell 4  Fisher 507,  525 

Tilghman  «.  Morse 5  Fisher 5 

Tilghman  «.  Proctor 102  U.  S 4,  5,  9,  62,  155,  284 

Tilghman  v.  Proctor 125  U.  S 425,  478,  544,  546,  547,  556, 

558,  566 

Time  Telegraph  Co  «.  Himmer 19  Fed.  Rep 386,  507 

Timken  «.  Olin 37  Fed.  Rep 69,  488 

Timken®.  Olin :...41  Fed.  Rep 425,  427,437 

Tobey  Furniture  Co.  «.  Colby 35  Fed.  Rep 525 

Toledo  Reaper  Co. «.  Harvester  Co.24  Fed.  Rep 532 

Tompkins  v.  Butterfleld 25  Fed.  Rep 279 

Tompkins  •».  Gage 5  Blatch 158 

Tomkinsonfl.  Mfg.  Co 23  Fed.  Rep 309 

Tonduer  v.  Chambers 37  Fed.  Rep 104,  298 

Toohey  v.  Harding 4  Hughes 287 

Topliff  v.  Topliff 145  U.  S 44,  62,  80,  100,  167,  169, 

198,  200,  203,  234,  435,  563 

Toppana  Tiffany  Car  Co 39  Fed  Rep 332 

Tracy  v  Torrey 2  Blatch 525 

Trader  v.  Messmore 1  Bann.  &  Ard 171 

Traver  v  Brown 62  Fed.  Rep 385 

Traversa.  Beyer 26  Fed.  Rep 331 

Travers  v.  Cordage  Co 64  Fed.  Rep 5,  393 

Traversa.  Spreader  Co 35  Fed.  Rep 517 

Trecothick  «.  Austin 4  Mason..  324 


Ixxxviii  TABLE    OF   CITED   CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Tremolo  Patent 23  Wallace 450,  552 

Troy  Iron  &  Nail  Factory  e. 

Corning 6  Blatch 548,  561,  563 

Troy  Iron  &  Nail  Factory  v. 

Corning 7  Blatch 415 

Troy  Machinery  Co.  ®.  Bunnell 27  Fed.  Rep 34,  40 

Troy  Nail  Factory  ».  Corning 14  Howard 252,260 

Truax  v.  Detweiler 46  Fed.  Rep 540 

Tuck  ®.  Bramhill 6  Blatch 157,  180,  186 

Tucker  ®.  Carpenter 1  Hempstead 530 

Tucker®.  Spalding 13  Wallace 41,410,  436 

Tufts®.  Tufts 3  Woodbury  &  Minot 488 

Turnbull  v.  Plow  Co 6  Bissell 237,  238 

Turrell®.  Spaeth 3  Bann.  &  Ard 209,  297,  299 

Turrill®.  Illinois  Central  R.R.  Co. 20  Fed.  Rep 553 

Turrill®.  Railroad  Co 1  Wallace 68,  169,  409 

Turtle®.  Claflin 62  Fed.  Rep 555 

Tuttle  ®.  Matthews 28  Fed.  Rep 150,  265,  287,  449 

Tyler  ®.  Boston 7  Wallace 101,  153,  306,  388 

Tyler®.  Galloway 12  Fed.  Rep 181,  186 

Tyler®.  Hyde 2  Blatch 273 

Tyler  ®.  Savage 143  U.  S 457 


Uhlman  ®.  Brewing  Co 53  Fed.  Rep 5 

Union  Bank  ®.  Kerr 2  Maryland  Chancery 502 

Union  Edge  Setter  Co.  ®.  Keith 139  U.  S 33 

Union  Edge  Setter  Co.  ®.  Keith 31  Fed.  Rep 40 

Union  Mfg.  Co.  ®.  Lounsbury 41  New  York 227 

Union  Mfg.  Co.  ®.  Lounsbury 42  Barbour 259 

Union  Metallic  Cartridge  Co.  ®. 

United  States  Cartridge  Co  ....2  Bann.  &  Ard 297 

Union  Paper  Bag  Machine  Co.  ®. 

Binney 5  Fisher 503,  517,  521,  524 

Union  Paper  Bag  Machine  Co.  ®. 

Crane 1  Bann.  &  Ard 121 

Union  Paper  Bag  Machine  Co.  «. 

Crane 1  Holmes 271 

Union  Paper  Bag  Machine  Co.  ®. 

Murphy 97  U.  S 300 

Union  Paper  Bag  Machine  Co.  ®. 

Newell  11  Blatch 502,  529 

Union  Paper  Bag  Machine  Co.  ®. 

Waterbury 39  Fed.  Rep 5,  186,  199.  203 

Union  Paper  Collar  Co.  ®.  Leland  .1  Bann.  &  Ard 40 

Union  Stone  Co.  ®.  Allen 14  Fed.  Rep 289 


TABLE   OF   CITED    CASES.  Ixxxix 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Union  Sugar  Refinery  v.  Mat- 

thiessen 2  Fisher 393 

Union  Switch  &  Signal  Co.  v. 

Johnson  Signal  Co 61  Fed.  Rep 255 

United  Nickel  Co.  «.  Electrical 

Works  25  Fed.  Rep 253 

United  Nickel  Co.  v.  Pendleton 15  Fed.  Rep 300 

United  Nickel  Co.  v.  Railroad  Co.. 36  Fed.  Rep 427,428 

United  Nickel  Co.  v.  Worthington .  13  Fed.  Rep 328,  334 

United  States  «.  Bell  Telephone  Col28  U.  S 275 

United  States  v.  Bell  Telephone  Co.  159  U.  S 496 

United  States  v.  Bell  Telephone  Co29  Fed.  Rep 136 

United  States  ».  Berdan  Arms  Co.. .156  U.  S 311,  320 

United  States  v.  Burns 12  Wallace 136 

United  States  ».  Butterworth 3  Mackey Ill 

United  States  v.  Colgate 21  Fed.  Rep 275 

United  States  v.  Colgate 32  Fed.  Rep 112 

United  States  ®.  Commissioner  of 

Patents  7  Off.  Gaz 119 

United  States  «.  Commissioner  of 

Patents 22  Off.  Gaz 94 

United  States  v.  Commissioner  of 

Patents 54  Off.  Gaz 109 

United  States  v.  Delespine's  Heirs. 12  Peters 401 

United  States  v.  Hall 7  Mackey 56 

United  States  v.  Marble 2  Mackey 120 

United  States  v.  Morris 2  Bond 278,  280 

United  States  v.  Palmer 128  U.  S 137,  263,  320 

United  States  v.  Samperyac Hemstead's  Circuit  Court  Reports  494 

United  States  Annunciator  Co.  ®. 

Sanderson 3  Blatch 387,  516,  524 

United  States  Bung  Mfg.  Co.  v. 

Independent  Bung  Co 31  Fed.  Rep 44,  54 

United  States  Credit  System  Co. 

v.  Indemnity  Co 51  Fed.  Rep 460 

United  States  Credit  System  Co. 

«.  Credit  Co 53  Fed.  Rep 460 

United  States  Credit  System  Co. 

v.  Credit  Indemnity  Co 59  Fed.  Rep 23 

United  States  Electric  Lighting 

Co.  v.   Consolidated  Electric 

Light  Co 33  Fed.  Rep 462 

United  States  Felting  Co.  v.  As- 
bestos Felting  Co 4  Fed.  Rep 374 

United  States  Packing  Co.  v.  Tripp31  Fed.  Rep 374 

United  States  Stamping  Co.  v. 

Jewett 7  Fed.  Rep 229 


XC  TABLE    OP   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

United  States  Stamping  Co. «.  KinglT  Blatch 215 

United  States  Stamping  Co.  v.  King4  Bann.  &  Ard 518 

Untermeyer  v.  Freund 87  Fed.  Rep 19 

Untermeyer  «.  Freund 58  Fed.  Rep 58,439,  546,  552 

Uptons.  Wayland 36  Fed.  Rep 509 

Urner  v.  Kayton 17  Fed.  Rep 559 

Vanbuskirk  «.  Hartford  Fire  In- 
surance Co 14  Connecticut 236 

Vance  v.  Campbell 1  Black  .72,  163,  180,  296,  338,  382,  461 

Vance*.  Campbell 1  Fisher 76 

VanHook  «.  Pendleton 1  Blatch 458,  522 

VanOrden*.  Nashville 67  Fed.  Rep 324 

VanOstrand*.  Reed 1  Wendall 240 

Varick  v.  Briggs 6  Paige 238 

Vattier®.  Hinde 7  Peters 450,  474 

Vaughan  «.  Central  Pacific  Rail- 
road Co 3  Bann.  &  Ard 347 

Vaughan  ®.  East  Tennessee,  Vir- 
ginia &  Georgia  Railroad  Co  . .  .2  Bann.  &  Ard 347 

Vermont  Farm  Machine  Co.  •». 

Gibson 50  Fed.  Rep 316. 

Vermont  Farm  Machine  Co.  v. 

Marble  20  Fed.  Rep 114 

Vinton  v.  Hamilton 104  U.  S 23 

Vogler  v.  Semple., 7  Bissell 300 

Vose  «.  Singer 4  Allen 249 

Vulcanite  Paving  Co.    ».    Pave- 
ment Co 36  Fed.  Rep 426 

Vulcanized  Fiber  Co.  ®.  Taylor 49  Fed.  Rep 26 

Wade  v.  Metcalf 129  U.  8 137 

Waiter.  Chair  Co 45  Fed.  Rep 455 

Walker  v.  Hawxhurst 5  Blatch; 278 

Walker  ®.  Rawson 4  Bann.  &  Ard 23 

Wall®.  Leek 61  Fed.  Rep 460 

Wall  «.•  Leek 66  Fed.  Rep 2 

Wallace  v.  Holmes 9  Blatch 331 

Wallace®.  Noyes 13  Fed.  Rep 25 

Wanamaker  v.  Enterprise  Mfg.  Co. 53  Fed.  Rep 480 

Ward  o.  County  of  Hartford 12  Connecticut 327 

Ward*.  Plow  Co 14  Fed.  Rep 25 

Warren  v.  Keep 155  U.  S 497,  547 

Washburn*.  Gould 3  Story 183",  213,  233,  243,  411 

Washburn  &  Moen  Mfg.  Co.  «. 

Barbed  Wire  Co 22  Fed.  Rep 520 


TABLE   OF   CITED   CASES.  XC1 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Washburn  &  Moen  Mfg.  Co.  v. 

Barbed  Wire  Co 33  Fed.  Rep 40 

Washburn  &  Moen  Mfg.  Co.  v. 

Barbed  Wire  Co 42  Fed.  Rep 258,  259 

Washburn  &  Moen  Mfg.  Co.  v. 

Freeman  Wire  Co 41  Fed.  Rep 259 

Washburn  &  Moen  Mfg.  Co.  v. 

Haish  4Bann.  &  Ard 230,  243,  282 

Washburn  &  Moen  Mfg.  Co.  v. 

Scutt  Co 22  Fed.  Rep 520 

Washing  Machine  Co.  v.  Earle 3  Wallace,  Jr 242 

Washing  Machine  Co.  v.  Tool  Co. ..20  Wallace 167 

Waterbury  Brass  Co.  «.  Miller 9  Blatch 287,292,  309 

Waterbury    Brass    Co.    «.    New 

York  Brass  Co 3  Fisher 387,  388,  409 

Waterman  v.  Mackenzie 138  U.  S....230,  243,  245,  250,  321,  324, 

325,  454 

Waterman  «.  Shipman 55  Fed.  Rep 245,  260.  326,  391 

Waterman  «.  Shipman 130  N.  Y 314 

Waterman  v.  Thomson 2  Fisher 59 

Water-Meter  Co.  v.  Deeper 101  U.  S 296 

Watson  v.  Railway  Co 132  U.  8 19 

Watson®.  Railway  Co 23  Fed.  Rep 33 

Watson  v.  Stephens 47  Fed.  Rep 42 

Wattfl.  Starke 101  U.  S 485 

Wayne  ».  Winter 6  McLean 394 

Weatherhead  v.  Coupe 147  U.  S 163,  296 

Weber  v.  Virginia 103  U.  S 135 

Webster  v.  New  Brunswick  Car- 
pet Co 1  Bann.  &  Ard 81 

Webster  Loom  Co.  v.  Higgins 4  Bann.  <fe  Ard 69 

Webster  Loom  Co.  v.  Higgins 39  Fed.  Rep 557 

Webster  Loom  Co.  v.  Higgins 43  Fed.  Rep 555 

Weir  v.  Morden 125  U.  S 23 

Welling  v.  Crane 14  Fed.  Rep 27 

Welling  v.  La  Bau 35  Fed.  Rep 436 

Welling  v.  Trimming  Co 2  Bann.  &  Ard 540 

Wells  «.  Gill 6  Fisher 504,  518,  524 

Wells  v.  Reynolds 69  Off.  Gaz Ill 

Wells  v.  Tatum 46  Fed.  Rep 23 

Wells  Glass  Co.  v.  Henderson 67  Fed.  Rep 6 

Werner  w.King 96  U.  S 298 

West  v.  Barns 2  Dallas 419 

Westt).  Rae 33  Fed.  Rep 460 

West  Publishing  Co.  v.  Co-opera- 
tive PublishingCo 53  Fed.  Rep 534 


XC11  TABLE    OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Westcott  0.  Rude 19  Fed.  Rep 427,  428,  430 

Western  Electric  Co.  0.  Ansonia  Co.  114  U.  8 6 

Western  Electric  Co.  0.  LaRue 139  U.  S 76,  161,  294,  297 

Western  Electric  Co.  ».  Odell 18  Fed.  Rep 19 

Western  Electric   Co.  0.  Sperry 

Electric  Co 58  Fed.  Rep  126,  463 

Western     Telephone     Construc- 
tion Co.  0.  Stromberg 66  Fed.  Rep 375,  515 

Westinghouse  0.  Air-Brake  Co 2  Bann.  &  Ard 164 

Westinghouse  0.  Air-Brake  Co 59  Fed.  Rep 25,  62 

Westinghouse  0.  Carpenter 43  Fed.  Rep 533,  536 

Westinghouse  0.  Duncan 66  Off.  Gaz Ill 

Westinghouse  ».  Edison  Electric 

Light  Co 63  Fed.  Rep 23,  171 

Westinghouse  0.  Gas  Co 43  Fed.  Rep 57 

Westinghouse  ».  Power  Brake  Co... 66  Fed.  Rep 173,405 

Westinghouse  Air-Brake  Co.  0 

Carpenter 32  Fed.  Rep 523 

Weston0.  White 13  Blatch 124 

Wetherell  0.  Keith 27  Fed.  Rep 69 

Wetherell  0.  Zinc  Co 6  Fisher 226,  234,  256 

Wetherill  0.  Zinc  Co 1  Bann.  &  Ard.. ..347,  539,  540,  546,  556 

Wheeler  0.  McCormick 8  Blatch 454 

Wheeler  0.  McCormick 11  Blatch 64,  162,  533 

Wheeler  0.  McCormick 4  Fisher 516 

Wheeler  0.  Reaper  Co 10  Blatch 72,  298 

Whippier  Hutchinson 4  Blatch 538,541 

Whipple  0.  Mfg.  Co 4  Fisher 387 

Whipple  0.Miner 15  Fed.  Rep 114 

AVhitcomb0.  Coal  Co 47  Fed.  Rep.. ..42,  94,  148,203,  211,  384 

White  0.  Dunbar 119  U.  S 166,  202,  210 

White  0.  Hunter 47  Fed.  Rep 507 

White  0   Lee 5  Bann.  &  Ard 258 

Whiter.  Lee 14  Fed.  Rep 29,257 

White  0.  Mfg.  Co 24  Off.  Gaz 179 

White  0.  Rankin 144  U.  S 314,  316 

White  0.  Surdam 41  Fed.  Rep 507 

White  0.  Walbridge 46  Fed.  Rep 297,  516,  533 

Whitely0.  Swayne 4  Fisher 201 

Whitford  0.  Clark  County 119  U.  S 407 

Whiting  0.  Bank  of  the  United 

States 13  Peters 492,  493 

Whiting  0.  Graves 3Bann.&Ard 231,  249 

Whitney  0.  B.  &  A.  R.  Co 50  Fed.  Rep 179 

Whitney  0.Mowry 3  Fisher 495 

Whitney  0.Mowry 4  Fisher 76 


TABLE    OF   CITED    CASES.  XC111 

Names  of  Cases.  Where  reported  Pages  in  this  book. 

Whittemore  ®.  Cutter 1  Gallison 433,438 

Wicke  ®.  Kleinknecht 1  Bann.  &  Ard 255 

Wickersham  ®.  Singer 1  McArthur's  Patent  Cases  81 

Wickersham's  Case 4  Off.  Gaz 221 

Wickes  ®.Lockwood 65  Fed.  Rep 70 

Wicks  ®.  Stevens 2  Bann.  &  Ard 201 

Wickwire  v.  Wire  Fabric  Co- 41  Fed.  Rep 486,  536 

Wilbur  v.  Beecher 2  Blatch 435 

Wilcox  v.  Jackson 13  Peters 530 

Wilcoxen  v.  Bowles 1  Louisiana  An'l .t 234 

Wilder  o.Kent 15  Fed.  Rep 254 

Wilder  ®.  McCormick 2  Blatch 350,  351,  355,  357 

Wiley  v.  Yale 1  Metcalf 343 

Wilkin  v.  Covel 46  Fed.  Rep 165 

Wilkins  ®.  Ellett 108  U.  S 322 

Wilkins  v.  Jordan 3  Washington 527 

Willard®.  Cooper 28  Fed.  Rep 23 

Williams  v.  Barnard 41  Fed.  Rep 294 

Williams  v.  Boston  &  Albany  Rail- 
road Co 4  Bann.&  Ard 92 

Williams  v.  Empire  Transporta- 
tion Co 3  Bann.  &  Ard 317 

Williams  v.  Leonard 9  Blatch 549 

Williams  v.  McNeely 56  Fed.  Rep 516 

Williams*.  Rubber  Shoe  Co 49  Fed.  Rep 171,  172 

Williams  v.  Rubber  Shoe  Co 54  Fed.  Rep 45 

Williams  v.  Steam  Gauge  &  Lan- 
tern Co 47  Fed.  Rep 101 

Williams  v.  Stolzenbach 23  Fed.  Rep 296 

Williames  v.  McNeely 64  Fed.  Rep 187 

Willimantic  Linen  Co.  v.  Clark 

Thread  Co 24  Fed.  Rep 489 

Willimantic  Thread  Co.  v.  Clark 

Thread  Co 27  Fed.  Rep 430 

Willis  ®.  McCullen 29  Fed.  Rep 331 

Wilson  v .  Barnum 8  Howard 499 

Wilson  v.  Chickering 14  Fed.  Rep 325 

Wilson®.  Coon 18  Blatch 152,  196,  198,  399 

Wilson  v.  Fire  Alarm  Co 52  Off.  Gaz 136,  245 

Wilson*.  Janes 3  Blatch 410 

Wilson®.  Keeley 43  Off.  Gaz 481 

Wilson®.  Mfg.  Co 12  Fed.  Rep 278 

Wilson  v.  Rousseau 4  Howard. ..205,  221,  222,  224,226,  235 

243,  320 

Wilson  v.  Sanford 10  Howard 315 

Wilson®.  School  District 32  New  Hampshire 327 


XC1V  TABLE   OF   CITED    CASES. 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Wilson  v.  Sherman 1  Blatch 516,520 

Wilson  v.  Simpson 9  Howard 227 

Wilson*.  Stolley 3  McLean.. 253 

Wilsons  Stolley 4  McLean .'..252,  451 

Wilson  * .  Turner Taney's  Circuit  Court  Decisions221,222 

Wilson  Packing  Co.  *.  Hunter 4  Bann.  &  Ard 317,318 

Wilton  *.  Railroad  Co 1  Brightley's  Federal  Digest 75 

Winans  *.  Denmead 15  Howard 44,  169,  173,  292 

Winans  v.  Railroad  Co 21  Howard 174 

Winchester  Arms  Co.  *.  Ameri- 
can Buckle  Co 54  Fed.  Rep 534 

Winchester  Arms  Co.  *.  Ameri- 
can Cartridge  Co 62  Fed.  Rep 549 

Wing  v.  Warren 5  Fisher 211 

Winner  Snow 19  Fed.  Rep 278,  280,  281 

Wintermute  v.  Redington 1  Fisher 247 

Wire  Book  Sewing  Machine  Co. 

®.  Stevenson 11  Fed.  Rep 271 

Wirt*.  Brown 30  Fed.  Rep 294,  540 

Wirt*.  Hicks 46  Fed.  Rep 445,  502,  533 

Wiscott  v.  Agricultural  Works 11  Fed.  Rep 249 

Wise*.  Allis 9  Wallace 363 

Wise  v.    Railway  Co 33  Fed.  Rep 351,457 

Wisner  v.  Grant 5  Bann.  &  Ard 158 

Wisner  *.  Grant 7  Fed.   Rep 210 

Withington-Cooley  Mfg.  Co.    *. 

Kinney    68  Fed.  Rep 263 

Wollensak  «.  Reiher 115  U.  S 203,400,466 

Wollensak  *.  Sargent 151   U.    S 42,203 

Wollensak  «.  Sargent 33  Fed.  Rep 509,  513 

Wollensak  «.  Sargent 41  Fed.  [Rep 171 

Wood  v.  Mill  Co 4  Fisher 5,  69 

Wood*.  Railroad  Co 2  Bissell 227 

Wood  *.  Underbill 5  Howard 153 

Wood*.  Wells 6  Fisher  1 259 

Woodbridge  *.  Perkins 3    Day  236 

Woodmanse  &  Hewitt  Co.  v.  Wil- 
liams  .' 68  Fed.  Rep 458,  459 

Wood-Paper    Patent 23  Wallace 208 

Woodruff   *.  Barney 2  Fisher 417 

Woodward  *.  Gas  Stove  Co 68  Fed.  Rep 508,  519 

Woodward   *.   Lasting  Mach.  Co. 60 Fed.  Rep 375 

Woodward  *.   Lasting  Mach.   Co. 63  Fed.  Rep 498 

Woodward  v.  Morrison 1  Holmes 306 

Woodworth  *.  Cook 2  Blatch 235,259 

Woodworth*.  Curtis 2  Woodbury  &  Minot 226,  227,  252 


TABLE   OF   CITED    CASES.  XCV 

Names  of  Cases.  Where  reported.  Pages  in  this  book. 

Woodworth  ®.  Edwards 3  Woodbury  &  Minot.218,  831,  447,  505 

Woodworth  ®.  Hall 1  Woodbury  &  Minot 211,  212 

Woodworth  ®.  Rogers 3  Woodbury  &  Minot 528,  529,  541 

Woodworth  v.  Stone 3    Story 212,213 

Woodworth  ®.  Weed 1  Blatch 259,520 

Woonsocket  Rubber  Co. ®.  Candee.23  Fed.  Rep 29 

Wooster®.  Handy 21  Fed.  Rep 488 

Wooster®.  Handy 23  Fed.  Rep 415,  491 

Wooster  v.   Machine   Co 4  Bann.  &  Ard 522 

Wooster  «.  Mfg.   Co 23  Off.  Gaz 259 

Wooster  v.  Marks 17Blatch 329 

Wooster  v.  Sidenberg 13Blatch 226 

Wooster  v.  Simonson 16  Fed.  Rep 430 

Wooster  v.  Simonson 20  Fed.  Rep 427 

Wooster  «.  Taylor 14Blatch 547 

Worley  ®.  Tobacco  Co 104  U.   S 84,108 

WorswickMfg.  Co.  ®.  Buffalo 20  Fed.  Rep 69 

Worswick  Mfg.  Co.  ®.  Philadelphia30  Fed.  Rep 479 

Wortendyke  v.  White 2  Bann.   &  Ard 253,520 

Wright  v.   Bales.... 2  Black 338,382 

Wright  v.  Postel 44  Fed.  Rep 80 

Wright  v.  Randall 8  Fed.   Rep 236,  238 

Wright  v.  Wilson , 11  Richardson  240 

Wright®.  Yuengling 155  U.  S 33,163,296 

Wright  &  Colton  Wire  Cloth  Co. 

v.  Wire  Cloth  Co 67  Fed.  Rep 161 

Wyeth   v.    Stone 1  Story 91,  185,  288 


Yale&GreenleafMfg.Co.  v.  North. 5  Blatch 534 

Yale  Lock  Co.  v.  Berkshire  Bank  .135  U.   S 79,  199,  201,  399 

YaleLock  Co.   v.  Greenleaf 117  U.  S 23 

Yale  Lock  Co.®.  National  Bank.  17  Fed.  Rep 40 

Yale  Lock  Co.  ®.  Sargent 117  U.  S 163,  181,  183,  184,  289, 

296,  425,  426,  43 
York    &    Cumberland    Railroad 

Co.  ®.  Meyers 18  Howard 419 

York  &  Maryland  Line  Railroad 

Co.  ®.  Winans 17  Howard 151,  326,  333,  337 

Young®.  Foerster 37  Fed.  Rep 254,  328 

Young  ®.  Lippman ....9  Blatch 504 

Young  ®.  Lippman 5  Fisher 528 

Yuengling®.  Johnson 1  Hughes 503,  506 


XCV1  TABLE    OF    CITED    CASES. 

Names  of 'Cases.  Where  reported.  Pages  in  this  book. 

Zanew.  Peck 13  Fed.  Rep 426 

Zanefl.  Soffe 5  Bann    &  Ard ;....  407 

Zinn  ®.  Weiss 7  Fed.  Rep 289 

Zinsser  v.  Krueger 45  Fed.  Rep  478,  480 

Zinsser  v.  Krueger 48  Fed.  Rep 42 


TABLE   OF   CITED   STATUTES. 


Names  of  Statutes                                  Sections  of  Statutes  Pages  in  this  book. 

Patent  Act  of  1790 1 130,  134,  216 

4 361 

Patent  Act  of  1793 1 88,  134,  216 

Patent  Act  of  1800 2 94 

Patent  Act  of  1832;  July  3 2 217 

"      3 191,194,206,214 

Patent  Act  of  1832;  July  13 1 90,  134 

Patent  Act  of  1836 6 104,  107,  135,  192 

7 115,  192 

8 146,  147 

13 82,  194.  206,  214 

15 135 

18 218,219,221,223,224,225 

"          "        21 217 

Patent  Act  of  1837 5 192 

6 94,220 

7 175,  195 

"      ...: s 192 

9 175,195 

Patent  Act  of  1839 6 146 

7 83,137,140 

Patent  Act  of  1842 3 17 

Patent  Act  of  1848 1 220 

Patent  Act  of  1861 ;    March  2 11 17 

16 142,148,219 

Patent  Act  of  1870 22 142 

25 142 

33 193 

'. 35 125 

37 ' 138 

41 115 

46  to  52..T 193 

53 194,204,206,207 

54 175 

55 875 

.  60....                                               .  175 


XCV111  TABLE    OF   CITED   STATUTES. 

Names  of  Statutes.  Sections  of  Statutes.  Pages  in  this  book. 

Patent  Act  of  1870 61 83,  135 

63 222,  223 

63  to  67 220 

66 224 

67 225 

71 16 

Patent  Act  of  1871;  March  3 1 193,211 

Patent  Act  of  1875 2 457,  476,  485 

Patent  Act  of  1887 1 ...438,552 

Patent  Act  of  1888 1 150,351 

Judiciary  Act  of  1891 6 123,  282,419,420.495,  496 

11 492,495,499 

Amendments  of  1895 7 487,  527,  531 

Judiciary  Act  of  1893 7 123,  420,  496 

8 123,420,497 

9 110,111 

Revised  Statutes 1 105 

483 94 

490 391 

591 537 

592 537 

593 537 

594 537 

595 537 

596 537 

608 348 

609 537 

611 537 

617 537 

618 537 

629 113,275,313,441 

649 381,  411,  412 

657 319,  349 

693 499 

699 188,419 

700 412,  420 

701 493,  498 

• 711 313 

716 503 

718 505 

719 537,  538 

720 503 

721 :....281.  376.  413,  473 

723 526 

740 319 

..  823...  ..  415 


TABLE   OF   CITED   STATUTES.  XC1X 

Names  of  Statutes.  Sections  of  Statutes.  Pages  in  this  book. 

Revised  Statutes  824 416 

848 417 

"  863 406,  559 

864 559 

865 406,  559 

866 448 

892 108,  388,  391,  399 

893 392 

899 401 

900 401 

905 400 

914 281,  347,  382,  413 

917 503 

945 448 

973 414 

983 415 

1007 495 

1012 495 

1910.. , 313 

"  1911 313 

4883 150,  351 

4884 140,  150,  352 

4885 106,  125,  147 

4886 57  67,  71,83,  109,148.350 

4887 46,  53,  142,  370 

4888 94,96,97,  152,  155,367,  368 

4889 04,  106,127 

4890 94,108 

4891 94,  107,  127 

4892 94,  103,  104 

4893 94,109 

4894 125 

4895 ..94,  148,  150,  211 

4896 94,  105,  148,  149,  150,  246 

4897 89 

4898 230,  235,  354,402,469 

4899 137 

4900 277,  401,  467 

4901 277,  280,  281 

4902 122 

4903 110,  116 

4904 119,  268 

4908 •. 120 

"  4909 110 

4910 110 

"  ...4911...  .  110 


C  TABLE  OF  CITED  STATUTES. 

Names  of  Statutes.  Sections  of  Statutes.  Pages  in  this  book. 

Revised  Statutes 4912 Ill 

4913 112 

4914 112 

4915 113,  114 

4916....  194,  198,  204,  206,  211,  214,  359, 

399,  465 

4917 177,  179,  185,  186,  352,  414 

4918 121,  268 

4919 320,  343,348,389,414,435, 

436,  442 
4920.. ..135,  361,  362,  363,  365,  366,  367, 

397,  463 

4921 441,442,  501 

4922 177,179,  184,352,368,398,414 

4923 53 

4924 222,  223 

4924  to  4928 220 

4927 224 

4928 225 

4931 142 

4934 105 

5045 246 

5046 246 

5053 246 

,...5596...  ..  503 


CHAPTEE  I. 


THE   SUBJECTS   OF   PATENTS. 


1.  Constitutional     and     statutory 

foundation  of  the  patent  laws. 

2.  Patent  law  meaning  of  the  word 

"  discovery." 

3.  Patent  law  meaning  of  the  word 

"art." 
3a.  Mechanical  processes. 

7.  Difference  between  a  "process" 

and  a ' '  principle  "  inquired  into. 

8.  Illustrated  by  the  case  of  Mc- 

Clurg  «.  Kingsland. 

9.  Illustrated     by    the     case     of 

O'Reilly  v.  Morse. 

10.  Illustrated  by  the  case  of  Mowry 
v.  Whitney. 

11.  Illustrated  by  the  case  of  Tilgh- 
man  «.  Proctor. 

lla.  Illustrated  by  the  Telephone 
Cases. 


12.  Illustrated  by  the  five    cases 
when  compared. 

13.  Illustrated    by  the  five   cases 

when  contrasted. 

14.  Deduced  from  the  five  cases  as 

compared  and  contrasted. 

15.  Illustrated  by  the  eighth  claim 

of  Morse. 

16.  Machines,  and  improvements  of 

machines. 

17.  Manufactures. 

18.  Compositions  of  matter. 

19.  Distinction  between  machines, 

manufactures,    and    composi- 
tions of  matter. 

20.  Designs. 

21.  On  whose  invention  designs  are 

patentable. 

22.  Utility  and  beauty  of  designs. 


§  1.  CONGEESS  has  power  to  promote  the  progress  of 
science  and  useful  arts,  by  securing  for  limited  times  to  in- 
ventors the  exclusive  right  to  their  respective  discoveries.1 
This  constitutional  law  is  the  foundation  of  all  the  patent 
laws  of  the  United  States.  In  accordance  with  the  power 
it  confers,  and  in  pursuance  of  the  object  it  mentions,  Con- 
gress has,  from  time  to  time,  enacted  certain  statutes.  The 
principal  enactment,  in  force  at  this  writing,  is  Section  4886 


1  Constitution  of  the  United  States  of  America,  Article  I,  Section  8. 


2  THE  SUBJECTS  OF  PATENTS  [CHAP.  I. 

of  the  Revised  Statutes  of  the  United  States.  Subject  to 
certain  conditions  and  limitations,  hereafter  to  be  explained 
in  this  book,  that  section  provides  that  any  person  who  has 
invented  or  discovered  any  new  and  useful  art,  machine, 
manufacture,  or  composition  of  matter,  or  any  new  and 
useful  improvement  thereof,  may  obtain  a  patent  therefor. 
Statute  law,  identical  with  this,  has  been  in  force  in  the 
United  States  ever  since  April  10,  1790 ;  except  that  the 
conditions  and  limitations  attending  it  have  varied  some- 
what from  time  to  time  :  and  except  that  compositions  of 
matter  were  not  mentioned  in  the  statute  prior  to  that  of 
February  21,  1793,  though  they  were  doubtless  covered  by 
the  word  "manufacture,"  which  the  earlier  statute  con- 
tained. 

§  2.  The  word  "discovery"  does  not  have,  either  in  the 
Constitution  or  the  statute,  its  broadest  signification.  It 
means  invention  in  those  documents,  and  in  them  it  means 
nothing  else.1  The  "discoveries"  of  inventors  are  inven- 
tions. The  same  man  may  invent  a  machine  and  may  dis- 
cover an  island  or  a  law  of  nature.  For  doing  the  first  of 
these  things  the  patent  laws  may  reward  him,  because  he 
is  an  inventor  in  doing  it ;  but  those  laws  cannot  reward 
him  for  doing  either  of  the  others,  because  he  is  not  an  in- 
ventor in  doing  either.2  The  statute  provides  that  patents 
may  be  granted  for  four  classes  of  things.  These  are  arts, 
machines,  manufactures,  and  compositions  of  matter.  None 
of  these  things  can  be  originally  made  known  by  discovery, 
as  our  continent  was.  They  are  not  found,  but  created. 
They  are  results  of  original  thought.  They  are  inventions. 
Laws  of  nature,  on  the  other  hand,  can  never  be  invented 
by  man,  though  they  may  be  discovered  by  him.  When 
discovered,  they  may  be  utilized  by  means  of  an  art,  a  ma- 
chine, a  manufacture,  or  a  composition  of  matter.  It  is 
the  invention  of  one  or  more  of  these,  for  the  purpose  of 
utilizing  a  law  of  nature,  and  not  the  discovery  of  that  law, 

1  In  re  Kemper,   1   McArthur's         2  Wall  v.  Leek,  66  Fed.  Rep.,  557, 
Patent  Cases,  4,  1841 ;   Haffcke  v.      1895. 
Clark,  46  Fed.  Rep.,  772,  1891. 


CHAP.  I.]  THE  SUBJECTS  OF  PATENTS.  3 

that  may  be  rewarded  with  a  patent.1  In  a  few  published 
precedents  there  are  phrases  which  seem  to  imply  discord 
with  these  propositions ;  but  there  is  no  American  case 
which  invalidates  them,  and  they  are  all  implied  and  illus- 
trated in  the  scientific  and  legal  histories  of  the  discoveries 
and  inventions  which  pertain  to  the  telegraph. 

Stephen  Gray,  in  1729,  discovered  the  electric  current, 
and  discovered  that  some  substances  are  conductors,  while 
other  substances  are  non-conductors  of  that  current ;  but 
he  did  not  live  to  see  those  laws  of  nature  utilized  in  any 
way.  OErsted,  in  1820,  discovered  that  an  electric  current 
will  deflect  a  magnetic  needle  placed  in  its  neighborhood. 
And  Arago  discovered  soon  afterward  that  an  electric  cur- 
rent will  magnetize  a  piece  of  soft  iron  in  its  neighborhood, 
and  that  when  the  current  is  broken  the  magnetism  in  the 
iron  instantly  expires.  This  was  the  crowning  discovery 
that  made  the  electro-magnetic  telegraph  a  possibility. 
Professor  Morse,  the  inventor  of  that  telegraph,  had  no 
share  in  making  that  discovery,  nor  in  making  either  of 
those  which  preceded  it.  He  was  not  a  scientist.  His 
profession  pertained  to  the  fine  arts,  and  not  to  those  com- 
monly called  useful.  Being,  however,  a  gentleman  of  read- 
ing, he  was  somewhat  conversant  with  the  principal  known 
laws  of  electricity  and  electro-magnetism,  and  when  he 
found  his  knowledge  deficient,  he  resorted  to  those  better 
informed  than  himself.  During  an  ocean  voyage  in  1832, 
he  conceived  the  invention,  which  he  completed  in  1837, 
patented  in  1840,  and  embodied  in  1844  in  a  working  tele- 
graph from  Washington  to  Baltimore.  Morse  was  as  justly 
entitled  to  a  patent  for  that  invention  as  he  would  have 
been  had  he  been  the  discoverer  of  all  the  laws  of  nature 
which  it  utilized.  On  the  other  hand,  Stephen  Gray,  had 
he  lived  in  the  country  of  Morse,  would  not  have  been  en- 
titled to  a  patent  for  his  discovery,  splendid  as  it  was,  be- 
cause what  he  made  known  was  neither  an  art,  a  machine, 


1  O'Reilly  v.  Morse,  15  Howard,  112,  1853 ;    Morton  v.  Infirmary,  5 
Blatch.,  116,  1862. 


4  THE  SUBJECTS  OF  PATENTS.  [CHAP.  I. 

a  manufacture,  nor  a  composition  of  matter ;  and  because 
to  have  given  him  an  exclusive  right  to  the  electric  current 
would  have  been  to  discourage  and  not  to  promote  the 
progress  of  science  and  useful  arts.  It  would  have  been 
to  prohibit  all  others,  during  the  life  of  that  patent,  from 
using  any  electric  telegraph  or  telephone,  should  any  be 
invented.  It  would  have  been  to  prohibit  man  from  utiliz- 
ing one  of  the  laws  of  God. 

§  3.  The  word  "art"  also  has  a  narrower  meaning  in  the 
patent  laws  than  it  has  in  the  dictionaries.  In  the  diction- 
aries its  significance  is  "the  use  of  means  to  produce  a 
result."  In  the  patent  laws  it  covers  only  a  limited  mean- 
ing of  the  word  process.  The  generic  definition  of  process 
is  "  an  operation  performed  by  rule  to  produce  a  result." 
Operations  performed  by  rule  may  be  classified  as :  1, 
operations  which  consist  partly  or  wholly  in  the  employment 
of  electricity,  chemistry,  pneumatics,  pyronomics,  hydrau- 
lics, or  some  other  non-mechanical  science ;  2,  operations 
which  consist  entirely  of  mechanical  transactions,  and  which 
are  only  the  peculiar  functions  of  the  respective  machines 
which  are  constructed  to  perform  them  ;  3,  operations  which 
consist  entirely  of  mechanical  transactions,  but  which  may 
be  performed  by  hand  or  by  any  of  several  different  me- 
chanisms or  machines.  It  is  settled  that  all  processes 
which  belong  to  the  first  class  are  subjects  of  patents  j1  and 
that  all  processes  which  belong  to  the  second  class  are  un- 
patentable  in  the  United  States.2  But  it  is  still  debatable 
whether  processes  which  belong  to  the  third  class  are  sub- 
jects of  patents  or  not. 

iCochrane  v.  Deener,  94  U.  S.,  ren,  22  Off.  Gaz.,  587,  1882;  Brain- 

780, 1876;  Tilghman  v.  Proctor,  102  ard  v.  Gramme,  12  Fed.  Rep.,  621, 

U.  S.,  728,  1880;  Eames  v.  An-  1882;  Goss  «.  Cameron,  14  Fed. 

drews,  122  U.  S.,  40,  1887;  Fer-  Rep.,  576,  1882;  Hatch  •».  Moffltt, 

mentation  Co.  v.  Maus,  122  U.  S.,  15  Fed.  Rep.,  253,  1883;  Reay  v. 

427,  1887;  Telephone  Cases,  126  Raynor,  19  Fed.  Rep.,  310,  1884; 

U.  S.,  533,  1888.  Moulton  v.  Commissioner  of  Pat- 

2  Corning  v.  Burden,  15  Howard,  ents,  61  Off.  Gaz.,  1480,  1892;  Bon- 

267,  1853 ;  MacKay  v.  Jackman,  12  sack  Machine  Co.  v.  Elliot,  63  Fed. 

Fed.  Rep.,  615,  1882;  New  v.  War-  Rep.,  837,  1894. 


CHAP.  I.]  THE  SUBJECTS  OF  PATENTS.  5 

§  3a.  This  question  of  the  patentability  of  processes  which 
consist  entirely  of  mechanical  transactions,  but  which  may 
be  performed  by  hand,  or  by  any  of  several  different  mech- 
anisms or  machines,  is  the  most  important  unsettled  question 
known  to  the  patent  laws  of  the  United  States.  It  has 
never  been  certainly  adjudicated  in  any  reported  case  in  any 
United  States  court,  though  thousands  of  patents  on 
such  processes  have  been  granted  and  have  expired,  and 
other  thousands  of  such  patents  have  been  granted  and  are 
still  in  being.  Moreover  there  is  no  reported  case  which 
contains  a  clear  discussion  of  the  question,  even  in  obiter 
dicta.  The  cases  which  can  be  thought  to  throw  light  upon 
the  matter,  fall  into  five  classes,  namely ;  1.  Cases  which 
adjudge  the  patentability  of  processes  of  the  first  class,  and 
which  affirm  that  patentability  in  terms  broad  enough  to 
perhaps  coyer  processes  of  the  third  class,  now  in  question.1 
2.  Cases  which  adjudge  the  non-patentability  of  processes 
of  the  second  class,  and  which  affirm  that  non-patenta- 
bility in  terms  perhaps  broad  enough  to  include  processes 
of  the  third  class  in  the  same  category.2  3.  Cases  which 
decree  the  validity  of  patents  on  processes  of  the  third 
class,  but  in  which  cases  the  hypothetical  non-patentability 
of  such  processes  was  not  apparently  brought  to  the  atten- 
tion of  the  court.3  4.  Cases  which  decree  the  invalidity  of 


1  Cochrane  v.  Deener,  94   U.  S.  267,  1853 ;  Bolton  «.  Commissioner 
787,  1876;  Tilghman  v.  Proctor,  102  of  Patents,  61  Off.  Gaz.  1480,  1892; 
U.  8  728,  1880 ;  Fermentation   Co.  Bonsack  Machine  Co.  «.  Elliot,  63 
v.  Maus,  122  U.  S.  413,  1887  ;  *Law-  Fed.  Rep.  837,  1894. 

ther  «.  Hamilton,  124  U.  8.  1,  1888;  3  Tilghman  v.  Morse,  5  Fisher, 

Poillon  v.  Schmidt,  3  Fisher,  476,  324,  1872 ;    Miller  «.  Androscoggin 

1869  ;  Roberts  v.  Dickey,  4  Fisher,  Pulp  Co.,  5  Fisher,  340,  1872;  Lor- 

532,  1871;  Wood  v.  Cleveland  Roll-  illard  v.  Dohan,  9    Fed.  Rep.  509, 

ing  Mill  Co.,  4  Fisher,  550,  1871  ;  1881!  Ballardv.  City  of  Pittsburgh, 

Celluloid  Mfg.  Co.,  fl.Zylonite  Co.,  12  Fed-   Rep.   783,   1882;   Eastern 

31  Fed.  Rep.,  904,  1887;  Adee  t>.  S^^A-i  ^^  %£? 

„   ,  Bag  Co.,  30  Fed.  Rep.  63,  1887; 

Thomas    41  Fed.  Rep.  346,   1890;  Un^n  p;per  Bag  Majhine' Co.  „'. 

Boyd  «.  Cherry,  50  Fed.  Rep.  279,  Waterbury,  39  Fed.  Rep.  392,  1889; 

1883;  Uhlman  «.  Brewing  Co.,  53  Travers  «.   Cordage  Co.,   64  Fed. 

Fed.  Rep.  491,  1893.  Rep.  771,  1894;  Edison  v.  Hardie, 

2  Corning  v.  Burden,  15  Howard,  68  Fed.  Rep.  488,  1895. 


6  THE  SUBJECTS  OF  PATENTS.  [CHAP.  I. 

patents  on  processes  of  the  third  class,  on  other  ground 
than  their  hypothetical  non-patentability,  without  men- 
tioning that  defense.1  5.  Cases  wherein  it  is  debatable 
whether  the  processes  which  were  held  therein  to  be  void 
for  non-patentability,  were  processes  of  the  second  class,  or 
of  the  third  class.2  A  wider  range  of  reasons  than  those 
which  appear  to  have  been  judicially  weighed  in  any  or 
all  of  these  cases,  will  deserve,  and  will  doubtless  receive, 
due  consideration  in  the  courts,  before  the  law  of  the  sub- 
ject is  finally  established. 

§  7.  It  was  shown  in  Section  2  that  the  discovery  of  a 
law  of  nature  is  not  patentable.  That  which  was  so  de- 
nominated in  that  section  is  often  spoken  of  as  a  "  princi- 
ple," and  at  other  times  as  a  "  scientific  principle,"  and 
again  as  a  "scientific  fact,"  and  still  again  as  a  "fact  in 
nature."  By  whatever  name  it  is  called  it  is  certain  that 
the  thing  referred  to  is  not  a  material  substance.  It  is  not 
to  be  apprehended  by  the  sense  of  touch,  but  when  dis- 
covered finds  a  lodgment  in  the  mind  as  a  mental  concep- 
tion only.  So  also,  a  process  is  not  a  substance  which  can 
be  handled.  It  is  seen  only  by  noting  its  constituent  acts 
as  they  are  being  performed.  'Principles  and  processes  are 
therefore  alike  in  that  they  are  intangible,  and  being  so, 
they  have  sometimes  been  mistaken  for  each  other. 

Whether  a  given  patent  is  one  for  a  process  or  one  for  a 
principle,  is  a  question  upon  which  its  validity  may  whol.ly 
depend.  It  is  therefore  important  to  ascertain  what  rule 
governs  the  decisions  of  such  questions ;  to  ascertain  pre- 
cisely wherein  consists  the  difference  between  a  principle 
and  a  process.  Any  search  for  that  distinction  made  during 
the  first  half  of  this  century  was  necessarily  a  speculative 

1  Downton  «.  Yeager  Milling  Co. ,  2  Risdon  Locomotive  Works  v. 
108  U.  8.  466,  1883;  Western  Eleo-  Medart,  158  U.  S.  68,  1895;  Apple- 
trie  Co.,  v.  Ansonia  Co.,  II*  U.  S.  ton  Mfg.  Co.  v.  Star  Mfg.  Co.,  60 
447,1885;  Miller  v.  Foree,  116  U.  Fed.  Rep.  411,  1894;  Wells  Glass 
S.  22,  1885 ;  Rochester  Coach-Lace  Co.,  v.  Henderson,  67  Fed.  Rep. 
Co.  v.  Schaefer,  46  Fed.  Rep.  190,  930,  1895. 
1891. 


CHAP.  I.]         THE  SUBJECTS  OF  PATENTS.  7 

one,  for  lack  of  authoritative  adjudged  cases  from  which  to 
reason.  Now,  however,  when  engaged  in  an  investigation 
of  the  point,  we  have  recourse  to  five  very  instructive  Su- 
preme Court  decisions.  The  proper  method  of  conducting 
the  inquiry  seems  to  be,  to  first  set  down  the  important  rel- 
evant points  of  each  of  those  cases,  and  then  to  ascertain 
what  doctrine  is  consistent  with  them  all.  Such  hypothetical 
rules  as  are  found  to  be  inconsistent  with  either  of  the  cases 
may  safely  be  rejected  as  not  true  rules ;  but  if  some  one 
proposition  is  found  to  logically  underlie  all  five  decisions, 
it  is  safe  to  believe  that  the  Supreme  Court  will  never  de- 
part from  it. 

§  8.  In  McClurg  v.  Kingsland l  it  appears  that  some 
method  was  long  sought,  by  means  of  which  rollers  or  cyl- 
inders could  be  so  cast  that  the  metal,  when  introduced  into 
the  moulds,  would  be  given  a  rotary  motion,  to  the  end  of 
throwing  the  flog  or  dross  into  the  centre  instead  of  the 
circumference  of  the  casting.  The  fact  that  rotary  motion 
would  so  result  was  an  understood  law  of  nature,  an  under- 
stood operation  of  centrifugal  force.  The  problem  was  to 
produce  such  a  motion  more  conveniently  and  more  uni- 
formly than  by  stirring  the  liquid  metal  with  a  circular 
movement  of  an  implement  inserted  therein.  That  problem 
was  solved  in  1834  by  James  Harley,  a  workman  in  a 
foundry  in  Pittsburg,  Pennsylvania.  He  discovered  that 
the  rotary  motion  desired  could  be  imparted  to  melted 
metal  by  injecting  that  metal  into  a  mould  tangentially.  A 
patent  was  granted  to  him  in  1835,  for  "  an  improvement  in 
the  mode  of  casting  chilled  rollers  and  other  metallic  cylin- 
ders and  cones."  Litigation  arose  on  the  patent,  and  com- 
ing before  the  Supreme  Court  it  was  held  to  be  a  patent  for 
a  process. 

§  9.  In  O'Reilly  v.  Morse2  it  appears,  as  also  it  appears 
in  Section  2  of  this  book,  that  Professor  Morse  was  not  the 
discoverer  of  either  of  the  laws  of  nature  which  he  utilized 


1  McClurg  v.  Kingsland,  1  How-          2  O'Reilly  v.  Morse,  15  Howard, 
ard,  202,  1843.  112,  1853. 


8  THE   SUBJECTS   OF   PATENTS  [CHA.P.  I. 

in  his  telegraph.  He  did,  however,  invent  a  machine  by 
means  of  which  those  laws  could  be  made  to  carry  informa- 
tion to  a  distant  place.  That  machine  was  dependent  for 
success  on  several  laws  of  nature,  and  lacking  any  one  of 
them  it  would  have  failed  of  its  result.  The  chief  of  these 
was  the  electric  current  discovered  by  Gray.  The  one  next 
in  importance  was  that  discovered  by  (Ersted  and  Arago, 
and  known  in  natural  philosophy,  as  electro-magnetism. 
The  eighth  claim  of  Morse's  patent  was  construed,  by  the 
Supreme  Court,  to  be  one  for  the  use  of  the  electric  current, 
for  marking  intelligible  signs  at  any  distance.  The  Supreme 
Court  held  that  claim  to  be  void. 

§  10.  In  Mowry  v.  Whitney,1  the  following  matters  are 
set  forth.  It  had  long  been  known  that  sudden  cooling  of 
very  hot  cast-iron  makes  it  hard,  but  brittle.  On  the  other 
hand,  the  slow  cooling  of  very  hot  cast-iron  was  known  to 
make  it  soft,  but  tough.  This  is  annealing.  Cast-iron  car- 
wheels  require  hardened  peripheries  and  annealed  hubs 
and  plates,  because  the  first  have  to  endure  friction  and  the 
last  two  have  to  endure  strain.  The  early  attempts  to  sub- 
ject car- wheels  to  both  hardening  and  annealing  produced' 
a  weak  and  worthless  article,  resulting  from  the  law  of  the 
expansion  and  contraction  of  metals.  The  peripheries  of 
the  wheels  were  hardened  by  chilling  them,  this  chilling 
consisting  in  surrounding  the  moulds  in  which  the  wheels 
were  cast  with  a  circle  of  iron,  and  with  only  a  thin  film  of 
sand  between  it  and  the  peripheries  of  the  wheels.  This 
iron  band  being  a  rapid  conductor  of  heat  caused  the  peri- 
pheries of  the  wheels  to  suddenly  cool,  and  thus  be  hard- 
ened, while  the  plates  and  hubs,  being  enclosed  in  a  thick 
mass  of  sand,  cooled  very  slowly,  and  were  thus  annealed. 
The  sudden  cooling  of  the  rims  of  the  wheels,  however, 
materially  contracted  their  circumference,  and  that  con- 
traction forced  the  still  hot  plates  to  contract  their  diameter. 
Then  when  the  plates  came  to  cool  down,  they  themselves 
contracted  still  more,  and  thus  tended  to  break  away  from 

1  Mowry  v.  Whitney,  14  Wallace,  620.  1871. 


CHAP.  I.]  THE  SUBJECTS  OF  PATENTS.  9 

the  rims,  which,  having  entirely  cooled  some  time  before, 
had  no  more  contracting  to  do.  Wheels  so  made  were 
therefore  weak. 

In  this  condition  of  affairs,  Asa  Whitney,  of  Philadelphia, 
discovered  in  1848  that  hardness  once  given  to  iron  will 
not  be  destroyed  or  seriously  impaired  by  the  immediate 
reheating  of  the  iron  and  its  subsequent  very  slow  cooling ; 
and  he  also  conceived  a  process  by  means  of  which  that 
law  of  nature  could  be  utilized  to  obviate  the  evil  explained 
in  the  last  paragraph.  That  process  consisted  in  taking  the 
wheels  from  the  moulds  very  soon  after  their  rims  were 
chilled,  and  in  putting  them  immediately  into  a  chamber  or 
furnace  which  had  previously  been  heated  about  as  hot  as 
the  then  heat  of  the  wheels,  and  thereupon  in  gradually 
raising  the  temperature  of  all  parts  of  the  interior  of  the 
chamber  or  furnace  and  its  contents  to  an  equally  high 
point,  and  finally  in  causing  all  parts  of  the  wheels  to  cool 
with  equal  slowness.  In  accordance  with  the  law  of  nature 
discovered  by  Whitney,  it  turned  out  that  the  third  stage 
of  this  process  did  not  destroy  or  seriously  impair  the  hard- 
ness of  the  peripheries  of  the  wheels  which  were  subjected 
to  it.  It  did,  however,  cause  the  peripheries  of  the  wheels 
to  re-expand  in  circumference,  and  in  so  doing  to  stretch 
the  still  hot  and  ductile  plates  back  to  nearly  the  same 
diameter  as  that  they  had  before  the  rims  were  contracted 
by  the  chill.  The  fourth  stage  of  the  process  then  served 
to  contract  all  parts  of  the  wheels  harmoniousl}7,  and  the 
result  of  the  whole  process  was  to  remedy  the  evil  at  which 
it  was  aimed.  Mr.  Whitney  obtained  a  patent  for  his  in- 
vention, and  the  Supreme  Court  held  it  to  be  a  patent  for 
a  process,  and  held  it  to  be  valid. 

§  11.  The  case  of  Tilghman  v.  Proctor  a  discloses  the  fol- 
lowing facts :  The  celebrated  French  chemist,  Chevreul, 
discovered  in  1813  that  fat  is  a  regular  chemical  compound, 
consisting  of  glycerine  and  three  kinds  of  fat  acids.  He 
also  discovered  that  fat  can  be  separated  into  those,  its 

i  Tilghman  c.  Proctor,  102  U.  S.  707,  1880. 


10  THE  SUBJECTS  OF  PATENTS.  [CHAP.  I. 

constituent  elements,  by  causing  them  to  severally  unite 
with  an  atomic  equivalent  of  water.  In  1853  Richard  A. 
Tilghman,  a  Philadelphia  chemist,  discovered  that  those 
elements  of  fat  can  be  caused  so  to  unite  with  an  atomic 
equivalent  of  water  by  mixing  the  fat  with  water,  and  by 
thereupon  subjecting  the  mixture  to  a  high  degree  of  heat 
and  to  such  a  degree  of  pressure  as  will  prevent  the  conver- 
sion of  the  water  into  steam.  In  1854  Mr.  Tilghman  ob- 
tained a  patent,  in  the  specification  of  which  he  announced 
his  discovery,  and  described  a  suitable  apparatus  in  which 
to  utilize  that  discovery  in  connection  with  the  discoveries 
of  Chevreul,  and  claimed  "the  manufacturing  of  fat  acids 
and  glycerine  from  fatty  bodies  by  the  action  of  water  at  a 
high  temperature  and  pressure."  The  Supreme  Court  held 
that  patent  to  be  one  for  a  process  and  to  be  valid. 

§  ll<z.  The  Telephone  Cases  l  set  forth  the  following  fun- 
damental facts  :  It  has  been  known  for  centuries  that  artic- 
ulate sounds  can  be  reproduced  at  a  distance  from  the  place 
where  they  are  originally  uttered  by  means  of  two  thin  dia- 
phragms, made  of  metal  or  membrane,  and  attached  at 
their  centres  to  the  respective  ends  of  a  tightly  drawn  cord 
or  wire ;  and  that  when  a  person  speaks  near  and  toward 
one  of  those  diaphragms  the  sound  vibrations  which  are 
produced  by  his  voice  cause  that  diaphragm  to  vibrate  cor- 
respondingly ;  and  that  those  corresponding  vibrations  are 
transmitted  along  the  cord  or  wire  to  the  other  diaphragm, 
and  cause  it  also  to  vibrate  correspondingly ;  and  that  the 
second  diaphragm  thus  vibrating  causes  corresponding  vibra- 
tions in  the  air  adjacent  thereto  ;  and  that  when  those  vibra- 
tions strike  upon  the  drum  of  the  ear  of  a  listener  they 
cause  him  to  hear  what  was  spoken  toward  the  first  dia- 
phragm. Instruments  like  this  are  called  string  tele- 
phones, and  they  utilize  that  law  of  nature  which  causes 
such  diaphragms  as  those  employed  therein  to  copy  and  to 
transmit  the  vibrations  of  air  which  occur  adjacent  thereto. 
It  has  been  known  ever  since  1831,  when  it  was  discovered 

i  Telephone  Cases,  126  U.  S.  531,  1888. 


CHAP.  I.]         THE  SUBJECTS  OF  PATENTS.  11 

by  Michael  Faraday,  that  when  an  armature  is  moved  in 
front  of  an  electro-magnet  which  is  being  magnetized  by 
an  electric  current  passing  through  its  coil,  the  motion 
modifies  the  current,  and  that  those  modifications  corre- 
spond to  the  movements  of  the  armature  in  duration,  in 
direction,  and  in  strength ;  and  it  has  long  been  known 
that  the  electric  current  thus  modified  will  cause  corre- 
spondingly modified  movements  in  the  armature  of  another 
electro-magnet  through  the  coil  of  which  •  the  electric  cur- 
rent thus  modified  is  also  passing.  At  this  stage  of  knowl- 
edge of  the  relevant  laws  of  nature;,  Alexander  Graham  Bell 
invented  his  telephone.  That  invention  consisted  in  mounting 
two  such  diaphragms  as  those  of  the  string  telephone  upon 
two  armatures  arranged,  combined  and  movable  as  above  de- 
scribed, and  thus  enabling  one  of  those  armatures  to  trans- 
mit, and  the  other  one  to  receive,  such  minute  and  exceed- 
ingly variant  vibrations  as  those  caused  in  the  air  by  the 
human  voice  ;  and  it  also  consisted  in  the  process  of  trans- 
mitting sounds  telegraphically,  by  causing  electrical  undu- 
lations, similar  in  form  to  the  vibrations  of  the  air  caused 
by  the  sounds,  to  occur  upon  the  conducting  wire.  Mr. 
Bell  obtained  a  patent  for  that  invention  in  1876,  and  the 
Supreme  Court  held  it  to  be  a  patent  for  a  process,  as  well 
as  for  an  apparatus,  and  held  the  process  claim  to  be  valid. 

§  12.  The  last  five  sections  present  five  cases,  covering 
five  subject-matters  of  claim,  four  of  which  the  Supreme 
Court  held  to  be  patentable  processes,  and  one  of  which 
that  tribunal  held  to  be  an  unpatentable  principle,  or  law 
of  nature.  To  learn  the  controlling  distinction  between  a 
claim  for  a  process  and  a  claim  for  a  principle,  it  is  there- 
fore sufficient  to  ascertain  precisely  wherein  consists  the 
controlling  difference  between  the  eighth  claim  of  Morse, 
on  the  one  hand,  and  the  claims  of  Harley,  Whitney,  Tilgh- 
man,  and  Bell  on  the  other. 

That  difference  does  not  consist  in  the  fact  that  Harley, 
Whitney,  and  Tilghman  each  discovered  one  of  the  laws 
of  nature  which  he  utilized,  while  the  laws  which  Morse 
utilized  were  discovered  by  others ;  because  the  Supreme 


12  THE  SUBJECTS  OF  PATENTS.  [CHAP.  I. 

Court  did  not  rest  its  decision  in  the  Morse  case  on  the 
ground  that  he  was  not  the  discoverer  of  the  electric  cur- 
rent, but  on  the  ground  that,  being  a  power  in  nature,  it  was 
not  patentable  to  any  person.  Neither  does  that  difference 
consist  in  anything  outside  of  the  use  of  laws  of  nature,  be- 
cause all  five  claims  extended  to  accomplishing  results  by 
means  of  such  law  or  laws,  regardless  of  the  particular  ap- 
paratus used  in  the  respective  processes.  The  fact  that 
tangential  injection  of  melted  metal  into  a  cylindrical  mould 
will  give  that  metal  a  rotary  motion  ;  the  fact  that  moderate 
reheating  of  a  car  wheel  will  not  destroy  its  chill ;  the  fact 
that  very  hot  water  will  separate  the  elements  of  fat ;  the 
fact  that  mechanical  motion  may  cause  electrical  undula- 
tions— every  one  of  these  is  just  as  truly  a  law  of  nature, 
just  as  truly  a  "  principle,"  as  is  the  fact  of  the  electric  cur- 
rent. JSor  was  the  apparatus  described  by  Harley,  Whit- 
ney, Tilghman,  and  Bell,  respectively,  for  the  purpose  of 
utilizing  the  first  four  of  these  laws,  respectively,  claimed  as 
their  sole  respective  inventions  any  more  than  the  particu- 
lar telegraph  described  by  Morse  was  made  essential  to  his 
eighth  claim. 

§  13.  There  is  apparently  but  one  radical  distinction  be- 
tween the  claims  of  the  four  patents  of  Harley,  Whitney, 
Tilghman,  and  Bell,  on  the  one  hand,  and  the  eighth  claim 
of  Morse  on  the  other.  That  distinction  is  as  follows : 
Harley,  Whitney,  Tilghman,  and  Bell  each  produced  a  pro- 
cess which  utilized  several  laws  of  nature,  and  each  of  them 
claimed  the  entire  process  he  produced,  including  the  use 
of  all  those  laws  in  the  order  and  method  described.  Morse 
also  made  an  invention  which  utilized  several  laws  of  na- 
ture, but  instead  of  claiming  his  combined  and  methodical 
use  of  all  those  laws,  his  eighth  claim  was  construed  as 
confined  to  one  of  them  alone.  This  difference,  taken  in 
connection  with  the  fact  that  the  Supreme  Court  sustained 
the  patents  of  Harley,  Whitney,  Tilghman  and  Bell,  and 
overthrew  the  eighth  claim  of  Morse,  and  taken  in  connec- 
tion with  the  fact  that  no  other  relevant  and  important  dif- 
ference can  be  detected,  points  to  the  soundness  of  the 


CHAP  I.]          THE  SUBJECTS  OF  PATENTS.  13 

doctrines  stated  in  the  next  section,  and  illustrated  in  the 
section  following  that. 

§  14.  A  patent  for  a  process  is  a  patent  for  the  described 
combined  use  of  all  the  laws  of  nature  utilized  by  that  pro- 
cess. A  patent  for  a  principle  is  a  patent  for  one  only  of 
the  laws  of  nature  used  in  a  process.  If  a  patent  for  a 
principle  were  granted  and  sustained,  it  would  be  much 
broader  than  a  patent  for  a  process,  because  it  would  cover 
all  processes  which  aim  at  the  same  result,  and  which  use 
the  particular  law  of  nature  covered  by  the  patent  for  a 
principle,  no  matter  in  what  combination  with  other  laws. 
A  patent  for  a  process,  on  the  other  hand,  covers  only  its 
own  method  of  using  all  of  the  laws  of  nature  which  it 
utilizes.  To  grant. and  sustain  a  patent  for  a  principle, 
would  induce  an  inventor  to  guess  which  of  the  laws  of  na- 
ture used  in  his  process  will  always  be  found  indispensable, 
and  guessing  rightly,  would  enable  him,  by  claiming  that 
particular  law,  to  suppress  all  subsequent  processes  using  it ; 
to  suppress  all  subsequent  invention  in  the  same  field  until 
such  time  as  his  patent  might  expire.  A  patent  for  a  pro- 
cess, on  the  contrary,  leaves  the  field  open  to  ingenious  men 
to  invent  and  to  use  other  processes  using  part  of  the  laws 
used  by  the  patented  process,  or  using  all  of  them  in  other 
combinations  and  methods. 

§  15.  An  illustration  of  the  doctrines  of  the  last  section 
exists  in  the  matter  of  the  eighth  claim  of  Morse,  when  con- 
sidered in  connection  with  other  telegraphs  than  his.  The 
subject  of  that  claim  was  construed  to  be  the  use  of  the 
electric  current  for  marking  signs  at  any  distance.  The 
electric  current  is  one  thing  and  electro-magnetism  is  an- 
other. The  first  was  discovered  by  Gray,  in  1729,  but  the 
existence  of  the  latter  was  not  known  until  ninety-one  years 
later.  Morse  used  both  in  his  telegraph,  but  his  eighth 
claim  was  construed  to  cover  the  electric  current  with  or 
without  the  other.  But  without  electro-magnetism  Morse's 
telegraph  would  not  work.  After  Morse  came  Bain,  who 
invented  a  telegraph  which  used  the  electric  current,  but 
did  not  use  electro-magnetism.  Its  recording  apparatus 


14  THE  SUBJECTS  OF  PATENTS.  [CHAP.  I. 

operated  electro-chemically,  and  not  electro-magnetically 
like  that  of  Morse.  Bain's  telegraph  could  work  with  a 
much  feebler  current  than  could  that  of  Morse,  and  there- 
fore the  relay  batteries  of  the  latter  were  not  wanted.  The 
two  telegraphs  had  nothing  in  common  except  that  both 
used  the  electric  current.  If  the  eighth  claim  of  Morse  had 
been  sustained  as  construed,  it  would  have  covered  Bain's 
and,  every  other  electric  telegraph,  capable  of  marking  signs 
at  a  distance.  On  the  other  hand,  had  that  claim  been  so 
drawn  as  to  cover  the  combined  use  of  all  the  laws  of  na- 
ture utilized  by  the  telegraph  of  Morse,  when  used  as  he 
used  them,  then  it  would  have  been  a  claim  for  a  process, 
and  not  being  obnoxious  to  either  of  the  weighty  objections 
which  are  set  forth  in  the  opinion  of  the  Supreme  Court,  it 
would  doubtless  have  been  sustained  by  that  tribunal.  In 
that  case,  however,  it  would  not  have  been  infringed  by 
the  telegraph  of  Bain,  nor  by  any  other  which,  like  his,  dis- 
pensed with  one  or  more  of  the  laws  of  nature  necessary  to 
the  process  of  Morse. 

§  16.  Machines,  and  improvements  of  machines  consti- 
tute the  subjects  of  a  majority  of  the  American  patents 
heretofore  granted.  '  A  machine  is  a  combination  of  moving 
mechanical  parts,  adapted  to  receive  motion,  and  to  apply  it 
to  the  production  of  some  mechanical  result  or  results. 
All  the  parts  of  a  machine  may  be  old  while  the  machine 
as  a  whole,  and  also  the  sub-combinations  which  are  con- 
tained therein,  are  proper  subjects  of  patents.1  An  im- 
provement of  a  machine  may  consist  of  an  addition  thereto, 
or  in  a  subtraction  therefrom,  or  in  substituting  for  one  or 
more  of  its  parts  something  different,  or  in  so  rearranging 
its  parts  as  to  make  it  work  better  than  before.  Whether 
or  not  a  given  improvement  is  a  patentable  one  will  always 
depend  upon  several  considerations.  In  order  to  be  so  it 
must,  first  of  all,  be  an  invented  improvement,2  as  distin- 
guished from  one  which  is  the  product  of  mere  mechanical 

1  Cantrell  v.  Wallick,  117  U.  S.          2  Cochrane  v.  Waterman,  1  Mc- 
694,  1886.  Arthur's  Patent  Cases,  53,  1844. 


CHAP.  I.]         THE  SUBJECTS  OF  PATENTS.  15 

skill  in  construction.  This  point  of  law  is  explained  at 
large  in  the  next  chapter.  So  also  it  is  explained  in  the 
chapter  on  infringement  what  improvements  can  be  used, 
and  what  improvements  cannot  be  used,  without  infringing 
the  patents  for  the  machines  improved  upon,  if  the  latter 
happen  to  be  patented.  It  is  enough  to  say  in  this  chapter, 
that  patents  are  not  void  merely  because  they  cover  pro- 
cesses or  things  which  include  old  inventions,1  and  that  an 
improvement  may  or  may  not  be  an  invention,  and  in  either 
case  may  or  may  not  be  an  infringement  of  a  patent  cover- 
ing the  machine  improved. 

§  17.  The  word  "  manufacture  "  has  a  much  narrower 
signification  in  the  American  patent  laws  than  it  has  in 
those  of  England.  In  the  latter  it  includes  everything 
made  by  the  hand  of  man,  and  also  includes  processes  of 
manufacture.  According  to  the  former,  processes  are  pat- 
entable  because  they  are  arts,  while  some  of  the  things 
made  by  the  hand  of  man  are  patentable  as  machines,  and 
some  others  are  patentable  as  compositions  of  matter,  and 
some  others  are  patentable  as  designs.  Whatever  is  made 
by  the  hand  of  man,  and  is  neither  of  these,  is  a  manu- 
facture, in  the  sense  in  which  that  word  is  used  in  the 
American  patent  laws.2  The  term  should  be  held  to  justify 
a  patent  for  the  invention  of  a  new  and  useful  human  habi- 
tation, or  a  new  and  useful  improvement  of  such  a  structure. 
This  statement  is  ventured,  notwithstanding  the  facetious 
obiter  dictum  of  Justice  GEIEK  in  the  jail  case.3 

§  18.  The  phrase  "  composition  of  matter,"  as  used  in 
the  statutes,  covers  all  compositions  of  two  or  more  sub- 
stances. It  includes,  therefore,  all  composite  articles, 
whether  they  be  the  result  of  chemical  union,  or  of  mechan- 
ical mixture,  or  whether  they  be  fluids,  powders  or  solids. 
To  be  a  proper  subject  of  a  patent,  a  composition  of  mat- 
ter must,  like  a  process,  a  machine,  or  a  manufacture,  be 


1  Cantrell  v.  Wallick,  117  U.  8.      Rep.  620,  1894. 

694,  1886.  »  Jacobs  «.  Baker,  7  Wallace,  297, 

2  Johnson  v.  Johnston,   60  Fed.      1868. 


16  THE  SUBJECTS  OF  PATENTS.  [CHAP.  I. 

able  to  endure  the  relevant  tests  of  invention,  novelty,  and 
utility,  which  are  stated  in  the  next  three  chapters  of  this 
book. 

§  19.  The  distinction  between  a  machine  and  a  manufac- 
ture cannot  be  so  stated  that  its  application  to  every  case 
would  be  clear  and  satisfactory  to  every  mind.  The  same 
remark  is  true  of  the  distinction  between  manufactures 
and  compositions  of  matter.  In  most  instances,  however, 
when  something  is  invented  by  the  mind  and  constructed 
by  the  hand  of  man,  its  classification  under  some  one  of 
these  heads  is  sufficiently  obvious.  If  an  inventor  is  cer- 
tain that  his  invention  belongs  to  one  or  another  of  the 
three  classes  of  things,  but  is  uncertain  as  to  which,  no  evil 
need  result  from  the  doubt.  No  inventor  needs  to  state  or 
to  know  whether  the  thing  he  has  produced  is  a  machine, 
a  manufacture,  or  a  composition  of  matter,  provided  he 
knows  that  it  is  one  or  the  other  of  these.  Seventeen- 
year  patents  may  be  lawfully  granted  for  a  thing  which 
falls  under  either  designation,  but  it  never  becomes  vitally 
important  to  determine  to  which  one  of  the  three  classes  a 
particular  thing  really  belongs. 

§  20.  Designs  are  patentable  under  Section  4929  of  the 
Revised  Statutes.  That  section  provides  that  any  person 
who,  by  his  own  industry,  genius,  efforts,  and  expense,  has 
invented  and  produced  any  new  and  original  design  for  a 
manufacture,  bust,  statue,  alto-relievo,  or  bas-relief,  any 
new  and  original  design  for  the  printing  of  woollen,  silk, 
cotton,  or  other  fabrics,  any  new  and  original  impression, 
ornament,  patent,  print,  or  picture  to  be  printed,  painted, 
cast,  or  otherwise  placed  on  or  worked  into  any  article  of 
manufacture,  or  any  new,  useful,  and  original  shape  or  con- 
figuration of  any  article  of  manufacture,  may,  subject  to 
certain  conditions  and  limitations  stated  in  the  statute,  ob- 
tain a  patent  therefor.  That  section  is  almost  a  literal 
transcript  of  Section  71  of  the  consolidated  Patent  Act  of 
1870,1  except  that  in  the  latter  the  word  "  pattern  "  is  found 

16  Statutes  at  Large,  Ch.  230,  p.  209. 


CHAP.  I.]  THE  SUBJECTS  OF  PATENTS.  17 

in  the  connection  in  which  the  word  "patent"  is  printed  in 
Section  4929.  The  change  from  "pattern"  to  "patent"  was 
doubtless  an  error  of  the  printers  of  the  Revised  Statutes. 
Those  statutes  were  enacted  as  printed,  and  not  as  is  the 
custom  with  shorter  edicts,  as  engrossed  in  writing.  The 
word  "patent"  is  meaningless  in  that  connection,  and  pat- 
terns, though  not  mentioned  in  the  section,  are  doubtless 
covered  by  its  other  provisions. 

§  21.  In  like  manner  as  Section  4929  of  the  Revised 
Statutes  was  enacted  to  take  the  place  of  Section  71  of  the 
Patent  Act  of  1870,  the  latter  was  passed  to  take  the  place 
of  Section  11  of  the  Patent  Act  of  1861.1  The  Act  of  1870 
differed  from  its  predecessor  mainly  in  conferring  upon  any 
person  the  rights  to  design  patents  which  the  Act  of  1861 
gave  only  to  citizens  and  to  aliens  who,  having  resided  one 
year  in  the  United  States,  had  taken  an  oath  of  intention 
to  become  citizens.  Section  11  of  the  Act  of  1861  was  a 
modification  of  Section  3  of  the  Patent  Act  of  1842,2  which 
latter  was  the  first  American  statute  authorizing  patents  for 
designs. 

§  22.  Section  4929,  like  all  three  of  its  predecessors,  pro- 
vided for  patents  for  a  certain  class  of  new,  useful,  and 
original  designs,  and  for  certain  other  classes  of  new  and 
original  designs,  thus  recognizing  the  fact  that  some  designs 
are  useful  as  well  as  ornamental,  while  others  have  no 
utility  except  to  please  the  eye  of  the  beholder.3  It  is 
questionable  whether  the  framers  of  the  constitutional  pro- 
vision relevant  to  encouragement  of  science  and  useful  arts 
intended  to  provide  for  patents  for  designs  which  are  use- 
ful only  because  they  are  ornamental.  In  our  age,  however, 
beauty  is  generally  believed  to  have  a  utility  of  its  own,  and 
patents  are  therefore  granted  and  sustained  for  designs 
which  are  useful  only  because  they  are  beautiful.4 


1 12  Statutes  at  Large,  Ch.  88,  p.  8  Smith  v.  Whitman  Saddle  Co., 

248.  148  U.  S.  678,  1893. 

i  5  Statutes  at  Large,  Ch.  263.  p.  4  Theberath  v.  Trimming  Co.,  15 

543.  Fed.  Rep.  250,  1883. 


CHAPTEE  II. 

INVENTION. 


25. 


26. 


27. 


23.  Invention  necessary  to  patent- 
ability. 

24.  Many  negative  rules,   but  no 
affirmative  rule,  for  determin- 
ing the  presence  or  absence  of 
invention. 

Mere  mechanical  skill  is  not  in- 
vention. 

Circumstances  indicating  dif- 
ference between  invention  and 
mechanical  skill. 
Excellence  of  workmanship  is 
not  invention. 

28.  Substitution  of  materials  is  not 
invention. 

29.  Exception  to  the  last  rule. 

30.  Enlargement  is  not  invention. 

31.  Change  of  degree  is  not  inven- 
tion. 

31a.  Exception  to  the  last  rule. 

32.  Aggregation  is  not  invention. 

33.  Simultaneousness  of   action  is 
not  necessary  to  invention. 

34.  Duplication  is  not  invention. 
Omission  is  not  generally  in- 
vention. 

Substitution  of  equivalents  is 

not  invention. 

New  combination  without  new 


35. 


36. 


37. 


mode  of  operation,  is  not  in- 
vention. 

38.  Using  old  thing  for  new  purpose 
is  not  invention. 

39  Cases  to  which  the  last  rule  does 
not  apply. 

40.  Doubts  relevant  to  invention, 
when  otherwise  insoluble,  are 
solved  by  ascertaining  compar- 
ative utility. 

41.  Form. 

4la.  Proportion. 

42.  Questions  of  invention  are  ques- 
tions of  fact. 

43.  Questions  of  invention  some- 
times investigated  in  the  light 
of  the  state  of  the  art. 

44.  Joint  and  sole  inventions. 

45.  How  made. 

46.  How  distinguished. 

47.  Suggestions  to  an  inventor. 

48.  Information  sought  by  an  in- 
ventor. 

49.  Mechanical  skill  not  necessary 
to  invention. 

50.  Sole  patent  to  one  joint  invent- 
or is  void. 

51.  Joint  patent  to  sole  inventor 
and  another  is  void. 


§  23.  IT  has  been  shown  that  the  word  "  discovered,"  in 
Section  4886  of  the  Revised  Statutes,  has  the  meaning  of 
the  word  "  invented."1  It  follows  that  patents  are  grant- 
able  for  things  invented,  and  not  for  things  otherwise 


1  Section  2  of  this  book. 


16 


CHAP.  II.] 


INVENTION. 


19 


produced.  Novelty  and  utility  must  indeed  characterize  the 
subject  of  a  patent,  but  they  alone  are  not  enough  to  make 
anything  patentable  ;  for  the  statute  provides  that  things  to 
be  patented  must  be  invented  things,  as  well  as  new  and 
useful  things.1  The  courts  have  therefore  declared  that  not 
all  improvement  is  invention,  and  entitled  to  protection  as 
such,  but  that  to  be  thus  entitled,  a  thing  must  be  the  pro- 
duct of  some  exercise  of  the  inventive  faculties.2  And  the 
law  stated  in  this  section  applies  not  only  to  processes,  ma- 
chines, manufactures,  and  compositions  of  matter,  but  also 
to  designs.3  But  a  patent  may  be  sustained  for  an  inven- 
tion which  resided  in  a  theory,  without  a  reduction  to  actual 
practice,  at  the  time  the  patent  was  granted,  if  that  theory 
afterwards  proves  to  be  correct,4  and  also  where  the  correct- 
ness of  the  theory  is  self-evident.5 

§  24.  The  abstract  rule  stated  in  the  last  section  is  as 
certainly  true  as  it  is  universally  just,  but  its  application  to 
particular  cases  cannot  be  made  without  the  guidance  of 


1  Thompson  v.  Boisselier,  114  U. 
S.  11,  1884;  Gardner  v.  Herz,  118 
U.  S.  191,  1885. 

a  Pearce  v.  Mulford,  102  U.  S.  112, 
1880;  Atlantic  Works  ».  Brady,  107 
U.  8.  199,  1882 ;  Slawson  v.  Rail- 
road Co.,  107  U.  S.  649,  1882;  Mor- 
ris v.  McMillin,  112  U.  S.  247,  1884; 
Hollisterr.  Benedict  Mfg.  Co.,  113 
U.  S.  59,  1885.  Stephenson  ».  Rail- 
road Co.,  114  U.  S.  149,  188."»;  Mun- 
son  v.  New  York  City,  124  U.  S. 
601,  1888;  Pattee  Plow  Co.  v.  King- 
man  &  Co.  129  U.  S.  294, 1889;  Wat- 
son v.  Railway  Co.,  132  U.  S.  161, 
1889;  Hill®.  Wooster,  132  U.  S.  700, 
1890 ;  Burt  v.  Evory,  133  U.  S.  349, 
1890;  Magin  v.  Karle,  150  U.  S.  391, 
1893;  Risdon  Locomotive  Works  v. 
Medart,  158  U.  S.  81,  1895; 

3  Smith  v.  Saddle  Co.,  148  U.  S. 
679,  1893;  Western  Electric  Mfg. 
Co.  v.  Odell,  18  Fed.  Rep.  322, 1883; 


Osborn  v.  Judd.  29  Fed.  Rep.  96, 
1886 ;  Meers  v.  Kelly,  31  Fed.  Rep. 
153,  1887 ;  Untermeyer  v.  Freund, 
37  Fed.  Rep.  343,  1889  ;  Redway  «. 
Stove  Co.,  38  Fed.  Rep.  583,  1889; 
Dukes  0.  Bauerle,  41  Fed.  Rep.  783, 
1890;  Foster  v.  Crossin,  44  Fed. 
Rep.  63,  1890 ;  Eclipse  Mfg.  Co.  v. 
Adkins,  44  Fed.  Rep.  282,  1890; 
Cahoone  Mfg.  Co.  v.  Harness  Co., 
45  Fed.  Rep.  585,  1891 ;  Anderson 
v.  Saint,  46  Fed.  Rep.  760,  1891; 
Eagle  Pencil  Co.  v.  American  Pen- 
cil Co.,  53  Fed.  Rep.  388,  1892. 

4  Telephone  Cases,  126  U.  S.  535, 
1888. 

6  Heath  «.  Hildreth,  1  McArthur's 
Patent  Cases,  19,  1841 ;  Screw  Co. 
v.  Sloan,!  McArthur's  Patent  Cases, 
210, 1853;  In  re  Seely,  1  McArthur's 
Patent  Cases,  249,  1853;  Chandler 
v.  Ladd,  1  McArthur's  Patent  Cases, 
493,  1857. 


20  INVENTION.  [CHAP.  n. 

more  concrete  propositions.  In  delivering  an  opinion  of 
the  Supreme  Court,  in  January,  1885,  Justice  MATTHEWS 
used  some  language  which  may  be  thought  to  establish  an 
affirmative  rule  by  which  to  determine  the  presence  or  ab- 
sence of  invention  in  every  case.  Speaking  of  a  simple 
device  which  the  court  held  not  to  be  an  invention,  he  said 
that  it  "  seems  to  us  not  to  spring  from  that  intuitive  faculty 
of  the  mind  put  forth  in  search  for  new  results  or  new 
methods,  creating  what  had  not  before  existed,  or  bringing 
to  light  what  lay  hidden  from  vision ;  but,  on  the  other 
hand,  to  be  the  suggestion  of  that  common  experience  which 
arose  spontaneously,  and  by  a  necessity  of  human  reason- 
ing, in  the  minds  of  those  who  became  acquainted  with  the 
circumstances  with  which  they  had  to  deal."1  This  lan- 
guage may  be  thought  to  mean  that  whatever  new  and  use- 
ful process,  machine,  manufacture,  composition  of  matter, 
or  design  is  produced  by  intuition  is  an  invention,  and  that 
whatever  such  thing  is  produced  by  reason  is  not  an  inven- 
tion. But  such  an  interpretation  of  the  language  would 
make  it  a  reductio  ad  absurdum.  Intuition  may  sometimes 
reach  to  a  single  brilliant  result ;  but  intuition  can  never 
conceive  or  correlate  the  mazes  of  movements  and  mechan- 
isms which  constitute  a  modern  automatic  machine.  To 
enforce  such  a  rule  as  that  hypothetically  implied  in  the 
language  of  Justice  MATTHEWS  would  be  to  deny  invention 
to  those  marvellous  combinations  of  numerous  metallic  de- 
vices which  compose  American  automatic  machinery,  and 
which  work  with  such  complexity  and  yet  with  such  precis- 
ion that  they  seem  themselves  to  be  endowed  with  reason. 
But  fortunately  the  supposed  interpretation  of  that  lan- 
guage is  evidently  not  the  meaning  of  the  court.  The  court 
does  not  deny  invention  to  all  the  products  of  pure  reason 
in  the  useful  arts.  It  merely  finds  want  of  invention  in 
those  things  which  are  conceived  "  spontaneously  and  by  a 
necessity  of  human  reasoning"  in  the  minds  of  those  who 
have  their  attention  directed  to  the  subject. 

1  Hollister  «.  Benedict  Mfg.  Co.,  113  U.  8.  72,  1885. 


CHAP.  II.]  INVENTION.  21 

In  a  later  case  the  Supreme  Court,  speaking  by  Justice 
BKOWN  of  the  meaning  of  the  word  "invention,"  said :  "The 
truth  is  the  word  cannot  be  denned  in  such  manner  as  to 
afford  any  substantial  aid  in  determining  whether  a  partic- 
ular device  involves  an  exercise  of  the  inventive  faculty  or 
not.  In  a  given  case  we  may  be  able  to  say  that  there  is 
present  invention  of  a  very  high  order.  In  another  we  can 
see  that  there  is  lacking  that  impalpable  something  which 
distinguishes  invention  from  simple  mechanical  skill. 
Courts,  adopting  fixed  principles  as  a  guide,  have  by  a  pro- 
cess of  exclusion  determined  that  certain  variations  in  old 
devices  do  or  do  not  involve  invention;  but  whether  the 
variation  relied  upon  in  a  particular  case  is  anything  more 
than  ordinary  mechanical  skill  is  a  question  which  cannot 
be  answered  by  applying  the  test  of  any  general  definition." l 
Thus  it  has  been  settled  by  the  Supreme  Court  that  the 
ideal  line  which  separates  things  invented  from  things 
otherwise  produced  can  never  be  concisely  defined ;  and 
that  there  is  no  affirmative  rule  by  which  to  determine  the 
presence  or  absence  of  invention  in  every  case ;  and  that 
such  questions  are  to  be  determined  by  means  of  several 
negative  rules  which  operate  by  a  process  of  exclusion. 
Each  of  those  rules  applies  to  a  large  class  of  cases,  and  all 
of  them  are  entirely  authoritative  and  sufficiently  clear.  To 
formulate  those  rules,  and  to  state  their  qualifications  and 
exceptions,  and  to  review  and  explain  the  adjudged  cases 
from  which  those  rules,  qualifications,  and  exceptions  are 
deducible,  is  the  scope  of  several  sections  which  immedi- 
ately follow. 

§  25.  It  is  not  invention  to  produce  a  device  or  process 
which  any  skilful  mechanic,  electrician,  or  chemist  would 
produce  whenever  required. 

In  holding  a  patent  to  be  void  the  Supreme  Court,  speak- 
ing by  Justice  BEADLEY,  delivered  a  paragraph  of  very  in- 
structive argument  in  support  of  the  rule  of  this  section :  a 
paragraph  so  valuable  as  to  call  for  its  verbatim  quotation 
in  this  text. 

1  McClain  v.  Ortmayer,  141  U.  S.  437,  1891. 


22  INVENTION.  [CHAP.  II. 

"The  process  of  development  in  manufactures  creates  a 
constant  demand  for  new  appliances,  which  the  skill  of  or- 
dinary head  workmen  and  engineers  is  generally  adequate 
to  devise,  and  which,  indeed,  are  the  natural  and  proper 
outgrowth  of  such  development.  Each  step  forward  pre- 
pares the  way  for  the  next,  and  each  is  usually  taken  by 
spontaneous  trials  and  attempts  in  a  hundred  different 
places.  To  grant  to  a  single  party  a  monopoly  of  every 
slight  advance  made,  except  where  the  exercise  of  invention 
somewhat  above  ordinary  mechanical  or  engineering  skill 
is  distinctly  shown,  is  unjust  in  principle  and  injurious  in 
its  consequences.  The  design  of  the  patent  laws  is  to 
reward  those  who  make  some  substantial  discovery  or  in- 
vention which  adds  to  our  knowledge  and  makes  a  step  in 
advance  in  the  useful  arts.  Such  inventors  are  worthy  of 
all  favor.  It  is  never  the  object  of  those  laws  to  grant  a 
monopoly  for  every  trifling  device,  every  shadow  of  a  shade 
of  an  idea  which  would  naturally  and  spontaneously  occur 
to  any  skilled  mechanic  or  operator  in  the  ordinary  prog- 
ress of  manufactures.  Such  an  indiscriminate  creation  of 
exclusive  privileges  tends  rather  to  obstruct  than  to  stim- 
ulate invention.  It  creates  a  class  of  speculative  schemers 
who  make  it  their  business  to  watch  the  advancing  wave  of 
improvement,  and  gather  its  foam  in  the  form  of  patented 
monopolies,  which  enable  them  to  lay  a  heavy  tax  upon 
the  industry  of  the  country  without  contributing  anything 
to  the  real  advancement  of  the  arts.  It  embarrasses  the 
honest  pursuit  of  business  with  fears  and  apprehensions  of 
concealed  liens  and  unknown  liabilities  to  lawsuits  and  vex- 
atious accountings  for  profits  made  in  good  faith."  l 

Many  other  cases  are  cited  for  illustrations  of  the  rule  of 
this  section ;  for  the  question  whether  a  given  process  or 
mechanism  evinces  invention,  or  only  shows  skill,  is  fre- 
quently a  difficult  question  to  decide,  and  such  decisions  may 
often  best  be  made  by  reasoning  by  analogy  from  cases 


1  Atlantic  Works  v.  Brady,  107  U.  S.  199,  1882. 


CHAP.  II.] 


INVENTION. 


23 


where  skill  has  been  found  to  be  present  and  invention  has 
been  found  to  be  absent.1 


!The  Corn-Planter  Patent,  23 
Wallace,  232, 1874;  Vinton  v.  Ham- 
ilton,  104  U.  S.  491,  1891;  Tack  Co. 
v.  Mfg.  Co.  109  U.  S.  119,  1883; 
Morris  v.  McMillin,  112  U.  S.  244, 
1884;  Hollister  v.  Benedict  Mfg. 
Co.  113  U.  S.  72,  1885;  Yale  Lock 
Co.  v.  Greenleaf,  117  U.  S.  554, 
1886;  Pomace  Holder  Co.  v.  Fergu- 
son, 119  U.  S.  335,  1886;  Weir  v. 
Morden,  125  U.  S.  98,  1888;  Brown 
v.  District  of  Columbia,  130  U.  S. 
87,  1889;  Day  v.  Railroad  Co.  132 
U.  S.  102,  1889;  Butler  v.  Steckel, 
137  U.  S.  29,  1890;  Shenfield  v. 
Nashawannuck  Mfg.  Co.  137  U.  S. 
59,  1890;  Consolidated  Roller  Mill 
Co.  •».  Walker,  138  U.  S.  132,  1891; 
Cluett  v.  Claflin,  140  U.  S.  180, 
1891;  Magowan  v.  Belting  Co.  141 
U.  8.  343,  1891;  Pope  Mfg.  Co.  v. 
Gormully  Mfg.  Co.  144  U.  S.  259, 
U92;  Ryan  v.  Hard,  145  U.  S.  246, 
1892;  Duer  v.  Lock  Co.  149  U.  S. 
222,  1893;  Leggett  v.  Standard  Oil 
Co.  149  U.  8.  295,  1893;  Sargent  v. 
Covert,  152  U.  S.  516,  1894;  Palmer 
v.  Corning,  156  U.  S.  342,  1895; 
Snow  v.  Taylor,  4  Bann.  &  Ard  5, 
1878;  Walker  v.  Rawson,  4  Bann. 
&  Ard.  130,  1879;  King  v.  Frostel, 
4  Bann.  &  Ard.  238,  1879;  Lorillard 
v.  Ridgway,  4  Bann.  &  Ard.  565, 
1879;  National  Mfg.  Co.  v.  Meyers, 
15  Fed.  Rep.  241,  1883;  McMurray 
v.  Miller,  16  Fed.  Rep.  473,  1883; 
Day  v.  Railroad  Co.  23  Fed.  Rep. 
189,  1885;  French  v.  Carter,  25  Fed. 
Rep.  41,  1885;  Calkins  v.  Oshkosh 
Carriage  Co.  27  Fed.  Rep.  296,  1886; 
Muller  v.  Ellison,  27  Fed.  Rep.  456, 
1886;  Consolidated  Fruit  Jar  Co.  v. 


Bellaire  Stamping  Co.  28  Fed.  Rep. 
91,  1886;  Adams  v.  Bellaire  Stamp- 
ing Co.  28  Fed.  Rep.  362,  1886; 
Willard  v.  Cooper,  28  Fed.  Rep. 
750,  1886;  Hasselman  v.  Gaar,  29 
Fed.  Rep.  318, 1886;  Celluloid  Mfg. 
Co.  v.  Zylonite  Novelty  Co.  30  Fed. 
Rep.  617,  1887;  Roth  v.  Keebler, 
30  Fed.  Rep.  618,  1887;  Cluett  t>. 
Claflin,  30  Fed.  Rep.  922,  1887;  Mc- 
Nab  v.  Mfg.  Co.  32  Fed.  Rep.  155, 
1887;  Landesmann  v.  Jonasson,  32 
Fed.  Rep,  590, 1887;  Kidd  v.  Horry, 
33  Fed.  Rep.  712,  1888;  Gates  Iron 
Works  v.  Fraser,  42  Fed.  Rep.  49, 
1890;  Studebaker  Mfg.  Co.  v.  Iron 
and  Bolt  Co.  42  Fed.  Rep.  52,  1890; 
National  Cable  Ry.  Co.  v.  Sioux 
City  Cable  Ry.  Co.  42  Fed.  Rep. 
679,  1890;  Delvin  v.  Heise,  43  Fed. 
Rep.  796,  1890;  Foos  Mfg.  Co.  «. 
Thresher  Co.  44  Fed.  Rep.  601, 
1891;  Wells  v.  Tatum,  46  Fed.  Rep. 
572,  1891;  Coston  «.  Pain,  47  Fed. 
Rep.  66,  1891;  Gustin  v.  Rail  Mill 
Co.  47  Fed.  Rep.  508,  1891;  Dayton 
Crupper  Co.  v.  Ruhl,  55  Fed.  Rep. 
651,  1893;  United  States  Credit 
System  Co.  v,  American  Credit  In- 
demnity Co.  59  Fed.  Rep.  139, 1893; 
Maitland  v.  Gibson,  63  Fed.  Rep. 
128,  1894;  Westinghouse  v.  Edison 
Electric  Light  Co.  63  Fed.  Rep. 
596,  1894;  McClery  v.  Baker,  63 
Fed.  Rep.  843,  1894;  MacKnight  v. 
McNiece,  64  Fed.  Rep.  115,  1894; 
Dalby  v.  Lynes,  64  Fed.  Rep.  380, 
1894  ;  Allen  v.  Steele,  64  Fed.  Rep. 
796,1894;  Thomson-Houston  Elec- 
tric Co.  •».  Western  Electric  Co.  65 
Fed.  Rep.  615,  1895. 


24  INVENTION.  [CHAP.  II. 

The  absence  of  invention  may  be  established  in  some 
cases,  by  evidence  that  a  considerable  number  of  persons 
who  were  not  inventors,  acting  independently  of  each  other, 
and  without  receiving  any  information  from  the  patentee  or 
his  patent,  did  in  fact  contrive  the  improvement  claimed 
therein,  not  long  'after  he  produced  it.1  And  where  that 
does  not  happen  to  be  the  case,  want  of  invention  can  be 
proved  by  teaching  a  mechanic  or  other  person  the  whole 
or  a  part  of  the  prior  art,  and  by  proving  that,  without 
exercising  any  invention,  he  promptly  produced  the  pat- 
ented improvement,  without  any  knowledge  on  the  subject 
except  what  he  had  thus  learned.2  But  it  does  not  tend 
to  prove  want  of  invention  to  show  that  a  skilful  mechanic 
who  had  seen  the  patented  thing,  can  reconstruct  some 
older  thing  so  as  to  make  it  similar  to  that  covered  by  the 
patent.2 

§  26.  But  if  a  particular  result  was  long  desired  and  some- 
times sought,  but  never  attained,  want  of  invention  cannot 
be  predicated  of  a  device  or  process  which  first  reached 
that  result,  on  the  ground  that  the  simplicity  of  the  means 
is  so  marked  that  many  believe  they  could  readily  have 
produced  it  if  required.4  That  is  the  opinion  of  many  rele- 
vant to  some  real  inventions,  because  solved  problems  often 
seem  easy  to  persons  who  could  never  have  solved  them, 
and  true  inventions  sometimes  seem  obvious  to  persons  who 
could  never  have  produced  them.  This  doctrine  does  not 
contradict  that  of  the  last  section.  It  only  teaches  us  that 
the  fact  upon  which  the  doctrine  of  the  last  section  is 
founded  cannot  be  proved  by  subsequent  opinion,  when 
that  opinion  is  inconsistent  with  prior  attempts  and 
failures. 

Bromley  Bros.   Carpet   Co.  v.  4  The  Barbed  Wire  Patent,  143  U. 

Stewart,  51  Fed.  Rep.  915,   1892;  S.  283,  1892;  Gandy  ».  Belting  Co. 

Haslem  v.  Pittsburgh  Plate  Glass  143  U.  8.  594,  1892;    Krementz  v. 

Co.  71  OS.  Gaz.  1770, 1894.  Cottle    Co.   148    U.   S.   560,   1893; 

2  National  Co.  •».  Belcher,  68  Fed.  Potts  «.  Creager,  155  U.  S.   609, 
Rep.  668,  1895.  1895;  DuBois  «.  Kirk,  158  U.  S.  63, 

3  Beach  v.  Box-Machine  Co.  63  1895. 
Fed.  Rep.  601,  1894. 


CHAP  II.]  INVENTION.  25 

In  The  Loom  Co.  v.  Higgins,1  Justice  BRADLEY  remarked 
that :  "It  may  be  laid  down  as  a  general  rule,  though  per- 
haps not  an  invariable  one,  that  if  a  new  combination  and 
arrangement  of  known  elements  produce  a  new  and  bene- 
ficial result,  never  attained  before,  it  is  evidence  of  inven- 
tion." The  exception  to  his  rule,  which  Justice  BRADLEY 
contemplated,  doubtless  refers  to  cases,  the  result  wherein 
was  never  before  attained  only  because  it  was  never  before 
desired.  In  the  circuit  court  cases  which  support  the  doc- 
trine of  this  section,  the  proviso  that  the  thing  or  process 
which  the  patentee  was  the  first  to  produce,  had  been  pre- 
viously sought  for  by  others  in  vain,  is  never  overlooked, 
but,  on  the  contrary,  is  always  treated  as  a  material  element 
in  the  proposition.2 

A  qualification  of  the  rule  of  this  section  consists  in  the 
subordinate  point,  that  where  several  improvements  have 
mutually  contributed  to  introduce  an  unused  invention  into 
public  favor,  and  where  it  does  not  appear  that  either  of 
those  improvements  alone  would  have  produced  that  result ; 
no  presumption  in  favor  of  either  of  those  improvements 
being  an  invention,  arises  out  of  the  commercial  success  of 
the  invention  thus  improved.3  And  another  qualification 
resides  in  holding  that  the  rule  of  the  section  does  not 


1  Loom  Co.  ®.  Higgins,  105  U.  S.  chine  Co.  v  Frame,  24  Fed.  Rep. 
591,  1881.  596,  1884;  Asmus  «.  Alden,  27  Fed. 

2  Terry  Clock  Co.  v  New  Haven  ReP-  687>  1886;  Adee.  «•   Peck>   43 
Clock  Co.  4  Bann.  &  Ard.  121, 1879;  Fed-  ReP-  499-  189°;  American  Ca-- 
Wallace  v.  Noyes,  13  Fed.  Rep.  180,  bl«  Ry-  Co.  D.  New  York,  56  Fed. 
1882;  Ward  «.   Plow  Co.    14  Fed.  RflP-  150,  1893;  Stohlmann  v.  Par- 
Rep.  696, 1883;  Davis  v.  Fredericks,  ker,  53  Fed.  Rep.  925,  1893;  West- 
19  Fed.  Rep.  99,  1884;  Patterson  t>.  inghouse  v.  Air-Brake'  Co.  59  Fed. 
Duff,  20  Fed.  Rep.  641,  1884;  Brown  Rep.  581,  1893;  Electric  Ry.  Co.  ». 
Mfg.  Co.  v.  Deere,  21  Fed.  Rep.  713,  Jamaica  R.  R.  Co.   61  Fed.  Rep. 
1884;  McFarland  v.  Spencer,  23  Fed.  670,  1894. 

Rep.  151,  1885;   Celluloid  Mfg.  Co.  3   Corbin    Lock    Co.    «.    Eagle 

v.  Chrolithion  Collar  &  Cuff  Co.  23  Lock  Co.  37  Fed.  Rep.  338,  1889. 
Fed.   Rep.   397,  1885;  Sewing  Ma- 


26  INVENTION.  [CHAP.  n. 

apply  where  the  prior  attempts  were  unsuccessful  because 
they  were  stupid,  or  unskilful.1 

§  27.  It  is  not  invention  to  produce  an  article  which  differs 
from  some  older  thing  only  in  excellence  of  workmanship. 

The  distinction  between  this  rule,  and  the  rule  of  Section 
25,  resides  in  the  fact  that  mechanical  skill  is  treated  as 
ability  to  plan  improvement ;  while  excellence  of  workman- 
ship is  contemplated  as  ability  to  execute  improvement  al- 
ready planned,  but  not  well  executed  by  him  who  planned  it. 
This  subject  does  not  require  an  elaborate  explanation  ;  be- 
cause it  is  evident  that  invention  does  not  reside  in  taking 
an  article  so  irregular  or  rough,  that  it  never  could  have 
found  a  sale  in  the  market,  and  exercising  upon  that  article 
such  superiority  of  workmanship  as  to  make  it  commercial.2 

§  28.  It  is  not  invention  to  substitute  superior  for  inferior 
materials,  in  making  one  or  more  or  all  of  the  parts  of  a 
thing. 

In  most  of  the  cases  which  embody  this  rule,  the  substi- 
tution of  materials  was  both  new  and  useful ;  and  in  some 
of  those  cases,  the  increase  of  utility  due  to  the  substitu- 
tion, was  decidedly  high.  But  the  courts  held  the  respective 
improvements  to  be  the  result  of  judgment  and  skill  in  the 
selection  and  the  adaptation  of  materials,  and  not  the  pro- 
duct of  the  inventive  faculties  of  those  who  made  them.3 

1  Butler  v.  Steckel,  137  U.  8.  29,  Brown  v.  District  of  Columbia,  130 
1890;  American  Feather  Duster  Co.  U.  S.  87,  1889;   Florsheim  «.  Schil- 
v.   Levy,   43  Fed.   Rep.  3«3,  1890;  ling,  137  U.  S.  76,  1890;  Hoff  ®.  Iron 
Mahon  v.  McGuire  Mfg.  Co.  51  Fed.  Clad  Mfg.  Co.  139  U.  S.  329,  1891 ; 
Rep.    684.    1892;    Johnson    Co.   v.  Ryan  v.  Hard,  145  U.  S.  245,  1892; 
Steel  Co.  67  Fed.  Rep.  942,  189.3.  In  re  Maynard,  1   McArthur's  Pat- 

2  Risdon  Locomotive  Works    v.  ent  Cases,  536,  1857;  Post  ®.  Hard- 
Medart,  158  U.  S.  81,  1895;  Buzzell  ware  Co.  26  Fed.  Rep.  616,  1886; 
v.  Fifleld,  7  Fed.   Rep.  467,    1881;  Forschner  v.  Baumgarten;  26  Fed. 
Hatch  v.  Moffltt,  15  Fed.  Rep,  252,  Rep.   858,   1886;    J.   L.   Mott  Iron 
1883;  Lee   v.  Upson  Hart  Co.    42  Works  v.  Cassidy,  31  Fed.  Rep.  47, 
Fed.  Rep.  531,  1890.  1887;  National  Roofing  Co.  v.  Gar- 

3  Hotchkiss   v.    Greenwood,    11  wood,  35  Fed.  Rep.  658,  1888;  Kil- 
Howard,  248, 1850;  Hicks*.  Kelsey,  bourne  v.  Bingham  Co.  47  Fed.  Rep. 
18  Wallace,  670,  1873;  Terhune  v.  57,  1891;  Vulcanized  Fiber  Co.  v. 
Phillips,  99  U.  S.  593,  1878;  Gard-  Taylor,  49  Fed.  Rep.  744,  1891. 
ner  v.  Herz,  118  U.  S.   192,   1885; 


CHAP.  II.]  INVENTION.  27 

There  being  no  invention  in  substituting  superior  for  in- 
ferior materials,  there  is  certainly  none  in  selecting  from  a 
number  of  materials  recommended  by  a  prior  patentee, 
that  one  which  is  best  adapted  to  the  purpose  in  view  ; l  and 
none  in  substituting  one  well-known  form  of  a  particular 
material,  for  another  well-known  form  of  the  same  ma- 
terial.8 

§  29.  Important  exceptions  have,  however,  been  estab- 
lished to  the  general  rule  of  the  last  section.  If  the  sub- 
stitution involved  a  new  mode  of  construction,  or  if  it 
developed  new  uses  and  properties  of  the  article  made,  it 
may  amount  to  invention.8  And  substitution  of  materials 
may  constitute  invention,  where  it  produces  a  new  mode  of 
operation,4  or  results  in  a  new  function,5  or  in  the  first  prac- 
tical success  in  the  art  in  which  the  substitution  is  made.6 
So  also,  where  the  excellence  of  the  material  substituted 
could  not  be  known  beforehand,  and  where  practice  shows 
its  superiority  to  consist  not  only  in  greater  cheapness  and 
greater  durability,  but  also  in  more  efficient  action,  the  sub- 
stitution of  a  superior  for  an  inferior  material  amounts  to 
invention.7 

§  30.  It  is  not  invention  to  so  enlarge  and  strengthen  a 
machine  that  it  will  operate  on  larger  materials  than  before* 

In  Phillips  v.  Page  8  the  patent  covered  the  first  circular 
saw-mill  which  was  adapted  to  sawing  logs.  Its  utility  was 
great,  and  was  unquestioned.  Machines  like  it,  except  that 
they  were  much  smaller  in  every  part,  had  been  used  before, 


1  Welling  v.  Crane,  14  Fed.  Kep.  «  Edison  Electric  Light  Co.  v.  U. 
571,  1882.  S.  Electric   Lighting  Co.    52  Fed, 

2  Brush   Electric  Co.  «.   Julien  Rep.  308,  1892. 

Electric  Co.  41  Fed.  Rep.  693,  1890;  7  Dalton  v.   Nelson,   13  Blatch. 

Brush  Electric  Co.  «.  Accumulator  357,    1876;    Celluloid  Mfg.   Co.    v. 

Co.  47  Fed.  Rep.  50,  1891.  American  Zylonite  Co.  35  Fed.  Rep. 

3  Smith  v.  Dental  Vulcanite  Co.  301,    1888;    Celluloid    Mfg.   Co.   «. 
93  U.  S.  496,  1876.  Crane  Chemical  Co.  36  Fed.   Rep. 

4  Perkins  v.  Lumber  Co.  51  Fed.  110,  1888. 

Rep.  291,  1892.  »  Phillips  v.   Page,   24  Howard, 

6  Potts  v.  Creager,  155  U.  S.  609,  164,  1860. 
1895. 


•28  INVENTION.  [CHAP.  n. 

to  saw  lath  and  other  slender  articles  out  of  small  blocks 
of  wood.  The  Supreme  Court  therefore  held  that  Mr.  Page 
did  not  invent  a  circular  saw-mill,  but  merely  constructed 
one,  by  copying  on  a  larger  scale  the  prior  machine  for 
sawing  lath. 

In  the  case  of  the  Planing  Machine  Co.  v.  Keith,1  the  pat- 
ent covered  the  Woodbury  planing  machine,  a  machine 
which  differed  from  the  older  Wood  worth  planing  machine 
in  one  respect  only.  Woodworth  used  rollers  to  press  the 
boards  against  the  bed  of  the  machine,  whereas  Woodbury 
used  pressure  bars  for  that  purpose.  The  Supreme  Court 
held  the  Woodbury  patent  to  be  void  because  Alfred  Anson, 
of  Norwich,  Connecticut,  had  previously  invented  and  con- 
structed a  machine  for  dressing  window-sash,  which  had 
pressure  bars  like  Woodbury,  instead  of  pressure  rollers 
like  Woodworth.  This  decision  was  made  notwithstanding 
the  fact  that  the  Anson  machine  was  too  small  and  too  weak 
for  general  planing  work  upon  boards  and  planks.  And 
this  rule  has  been  applied,  and  is  well  illustrated,  in  several 
other  Supreme  Court  cases.2 

§  31.  It  is  not  invention  to  change  the  degree  of  a  thing, 
or  of  one  feature  of  a  thing. 

In  Glue  Co.  v.  Upton 3  the  patent  covered  pulverized  glue 
mafde  from  flake  glue  by  grinding  it  in  any  suitable  manner. 
It  had  several  points  of  superiority  over  all  former  kinds  of 
glue,  but  the  Supreme  Court  held  that,  not  being  a  product 
of  invention,  the  patent  covering  it  was  void. 

In  Guidet  v.  Brooklyn 4  the  patent  covered  paving-stones 
of  a  certain  shape  and  with  rough  sides.  Paving-stones  of 
the  same  shape,  but  with  sides  less  rough,  had  been  known 
before.  To  make  the  sides  of  the  prior  stones  rougher  was 


1  Planing  Machine  Co.  v.  Keith,  430,  1894. 

101  U.  S.  490,  1879.  s  Qiue  Co.  c.  Upton,  97  U.  S.  6, 

2  Peters  v.  Active  Mfg.   Co.   129  1877. 

U.    8.530,1889;  Morgan  Envelope  4  Guidet  v.  Brooklyn,  105  U.  S. 

Co.  v.  Albany  Paper  Co.,  152  U.  S.  553,  1881. 


CHAP.  II. J  INVENTION.  29 

held  by  the  Supreme  Court  to  be  a  change  in  degree  only, 
and  therefore  not  patentable. 

In  Estey  v.  Burdett,1  one  of  the  claims  of  the  patent  in- 
volved, depended  upon  concentrating  certain  valve  openings 
into  a  smaller  space  than  had  theretofore  been  occupied  by 
them.  The  Supreme  Court  held  that  there  was  no  inven- 
tion in  that  change. 

In  Preston  v.  Manard2  the  alleged  invention  consisted  in 
making  the  reel  of  a  fountain  hose-carriage  of  larger  diam- 
eter than  were  the  reels  of  former  hose-carriages,  in  order 
to  allow  the  water  to  pass  through  the  hose  when  partly 
wound  upon  the  reel.  The  Supreme  Court  held  that  there 
resided  no  invention  in  that  improvement. 

In  French  v.  Carter,3  the  patent  claimed  a  roof  for  a  vault, 
which  consisted,  like  an  earlier  roof,  of  two  gable-stones, 
and  two  sloping  roof-stones,  and  one  cap-stone  ;  and  which 
differed  from  the  earlier  roof  in  that  its  roof-stones  were 
narrower,  and  its  cap-stone  was  wider,  than  the  corres- 
ponding stones  of  the  earlier  vault.  The  Supreme  Court 
held  that  these  differences  of  degree  did  not  constitute  in- 
vention. 

Circuit  Court  cases  which  have  been  decided  by  skilful 
judges  furnish  still  other  illustrations  of  the  rule  of  this 
section.4 

§  31#.  A  meritorious  exception,  to  the  rule  of  the  last  sec- 
tion, is  involved  in  the  adjudicated  validity  of  the  Edison 
incandescent  light  patent.5  The  carbon  filament  which 


1  Estey  «.  Burdett,  109  U.  S.  640,  797,  1885;  Smith  t>.  Murray,  27  Fed. 
1884.  Rep.   69,  1886;    Kurd  v.   S.now,   35 

2  Preston  v.   Manard,   116  U.  8.  Fed  Rep.  423,  1888;  Blumenthal  v. 
663,  1886.  Burrell,  43  Fed.   Rep.    669,   1890; 

3  French  «.  Carter,  137  U.  8.  239,  Murphy  v.  Trenton  Rubber  Co.  45 
1890.  Fed.  Rep.    571,    1891;    Caverly   «. 

4  Stow  v.  City  of  Chicago,  SBann.  Deere,  52  Fed  Rep.  763,  1892. 
AArd.  91,  1877;  White  v.   Lee,   14         *  Edison  Electric  Light  Co.  «.  U. 
Fed.   Rep.  790,   1882;  Woonsocket  8.   Electric  Lighting  Co.   52  Fed. 
Rubber  Co.  v.  Candee,  23  Fed.  Rep.  Rep.  300,  1892. 


30  INVENTION.  [CHAP.  n. 

constitutes  the  only  new  part  of  the  combination  of  the 
second  claim  of  that  patent,  differs  from  the  earlier  carbon 
burners  of  Sawyer  and  Man,  only  in  having  a  diameter  of 
one-sixty-fourth  of  an  inch  or  less,  whereas  the  burners  of 
Sawyer  and  Man  had  a  diameter  of  one-thirty-second  of 
an  inch  or  more.  But  that  reduction  of  one-half  in  diam- 
eter increased  the  resistance  of  the  burner  four-fold,  and 
reduced  its  radiating  surface  two-fold,  and  thus  increased 
eight-fold,  its  ratio  of  resistance  to  radiating  surface.  That 
eight-fold  increase  of  proportion,  enabled  the  resistance  of 
the  conductor  of  electricity  from  the  generator  to  the  bur- 
ner, to  be  increased  eight-fold,  without  any  increase  of  per- 
centage of  loss  of  energy  in  that  conductor,  or  decrease  of 
percentage  of  development  of  heat  in  the.  burner  ;  and  thus 
enabled  the  area  of  the  cross  section  of  that  conductor  to 
be  reduced  eight-fold,  and  thus  to  be  made  with  one-eighth 
of  the  amount  of  copper  or  other  metal,  which  would  be  re- 
quired if  the  reduction  of  diameter  of  the  burner  from 
one-thirty-second  to  one-sixty-fourth  of  an  inch  had  not 
been  made.  And  that  great  reduction  in  the  size  and  cost 
of  conductors,  involved  also  a  great  difference  in  the  com- 
position of  the  electric  energy  employed  in  the  system ; 
that  difference  consisting  in  generating  the  necessary 
amount  of  electrical  energy  with  comparatively  high  electro- 
motive force,  and  comparatively  low  current,  instead  of 
contrarywise.  For  this  reason,  the  use  of  carbon  filaments, 
one-sixty-fourth  of  an  inch  in  diameter  or  less,  instead  of 
carbon  burners  one-thirty-second  of  an  inch  in  diam- 
eter or  more,  not  only  worked  an  enormous  economy  in 
conductors,  but  also  necessitated  a  great  change  in  gener- 
ators, and  did  both  according  to  a  philosophy,  which  Edi- 
son was  the  first  to  know,  and  which  is  stated  in  this  para- 
graph in  its  simplest  form  and  aspect,  and  which  lies  at  the 
foundation  of  the  incandescent  electric  lighting  of  the  world. 

§  32.  Aggregation  is  not  invention. 

In  Hailes  v.  Van  Wormer  *  the  patents  passed  upon,  cov- 

1  Hailes  v.  Van  Wormer,  20  Wallace,  353,  1873. 


CHAP  II.'J  INVENTION.  31 

ered  certain  self-feeding  coal  stoves.  These  stoves  were 
better  than  any  which  preceded  them,  because  they  con- 
tained more  good  things  than  were  ever  before  assembled 
in  that  kind  of  heater.  All  of  the  things  so  assembled  were 
old.  The  superiority  of  the  patented  stoves  arose  from  the 
fact  that  sundry  good  features,  theretofore  scattered  through 
several,  were  in  them  gathered  into  one  such  article  of  man- 
ufacture. The  things  so  united  did  not,  however,  perform 
any  joint  function,  but  each  did  only  what  it  had  formerly 
done  in  former  stoves.  The  Supreme  Court  held  the  whole 
to  be  a  mere  aggregation  of  devices,  and  not  to  be  invention. 

The  case  of  Reckendorfer  v.  Faber l  was  based  upon  pat- 
ents for  a  new  and  useful  article,  of  which  many  millions  of 
specimens  had  been  made  and  sold  since  those  patents  were 
granted.  That  article  was  a  piece  of  soft  rubber  united  to 
one  end  of  a  lead  pencil.  The  Supreme  Court  called  atten- 
tion to  the  fact  that  there  was  no  joint  operation  performed 
by  the  pencil  and  the  rubber,  and  therefore  held  the  pat- 
ents to  be  void  for  want  of  invention. 

In  Pickering  v.  McCullough  2  Justice  MATTHEWS  said : 
"  In  a  patentable  combination  of  old  elements,  all  the  con- 
stituents must  so  enter  into  it  as  that  each  qualifies  every 
other ;  to  draw  an  illustration  from  another  branch  of  the 
law,  they  must  be  joint  tenants  of  the  domain  of  invention, 
seized  each  of  every  part,  per  my  et  per  tout,  and  not  mere 
tenants  in  common,  with  separate  interests  and  estates.  It 
must  form  either  a  new  machine  of  a  distinct  character  and 
function,  or  produce  a  result  due  to  the  joint  and  co-operat- 
ing action  of  all  the  elements,  and  which  is  not  the  mere 
adding  together  of  separate  contributions." 

The  first  of  these  sentences  has  been  thought  to  imply  a 
severer  doctrine  than  the  second,  and  some  of  the  lower 
courts  have  inclined  to  ascribe  to  the  opinion  a  milder  sig- 
nification than  the  first  sentence  standing  alone  may  appear 
to  warrant. 


i  Reckendorfer  v.  Faber,  92  U.  S.          2  Pickering   v.  McCullough,   104 
357,  1875.  U.  S.  318,  1881. 


32  INVENTION.  [CHAP.  II. 

The  Circuit  Court  of  Appeals  for  the  third  circuit  has 
said  that :  "  If,  instead  of  an  extract,  the  whole  opinion  be 
read,  in  connection  with  the  authorities  which  are  cited  in 
it,  it  may  be  readily  perceived  that  the  substance  of  the 
doctrine  intended  to  be  affirmed,  is  that  a  combination,  to 
be  patentable,  must  produce  a  new  and  useful  result  as  the 
product  of  the  combination,  and  not  a  mere  aggregate  of 
several  results,  each  the  complete  result  of  one  of  the  com- 
bined elements."  And  that :  "If  it  were  essential  to  a  valid 
patent  for  any  combination  whatever,  that  the  mode  of  op- 
eration of  every  element  included  in  the  combination  should 
be  changed  by  each  of  the  others,  it  would  have  been  im- 
possible to  sustain  several  combination  patents  which  have 
in  fact  been  upheld,  as,  indeed,  it  would  be  difficult  to  con- 
ceive of  any  mechanical  combination  which  would  be  both 
possible  and  patentable."  l 

And  Judge  BAKEE  held  that  no  such  doctrine  was  essen- 
tial to  the  decision  of  the  case,  nor  is  fairly  deducible  from 
the  particular  language  above  quoted  from  Justice  MAT- 
THEWS, as  that,  in  a  patentable  combination,  all  the  constit- 
uents must  so  enter  into  it  that  each  qualifies  the  mode  of 
action  of  every  other,  and  that  each  element  must  not  merely 
perform  its  own  part  in  the  combination,  but  must  also  in 
some  way  be  directly  and  immediately  concerned  in  the 
performance  of  their  respective  parts  by  every  other  of  the 
elements ;  and  that :  "  All  that  can  be  claimed  to  be  settled 
by  the  case  is,  that  a  combination,  to  be  patentable,  must 
produce  a  single  new  and  useful  result,  or  an  old  result  in  a 
better  or  cheaper  manner,  as  the  product  of  the  combination."8 

And  Judge  McKENNA  expressly  declined,  when  strenu- 
ously urged  by  counsel  so  to  do,  to  recognize  as  an  estab- 
lished rule  of  law,  that  in  all  cases  where  the  action  of  each 
of  the  combined  devices  remains  its  own  individual  action, 
there  is  no  patentable  combination.3 

1  National  Cash  Register  Co.  v.      Rep.  249,  1895. 

American   Cash    Register    Co.   53         3  Bowers  v.  Von  Schmidt,  63  Fed. 
Fed.  Rep.  371,  1892.  Rep.  582,  1894. 

2  Heath  Cycle  Co.  v.  Hay,  67  Fed. 


CHAP.  II.]  INVENTION.  33 

And  while  the  language  above  quoted  from  Pickering  v. 
McCullough  has  been  often  quoted  since  it  was  delivered, 
there  is  no  case  in  which  the  severer  doctrine  of  the  first 
sentence  of  that  language  has  been  applied  to  defeat  any 
patent  or  claim  which  could  have  endured  the  milder  doc- 
trine of  the  second  of  those  sentences,  or  the  milder  doc- 
trine held  in  the  three  last  mentioned  cases.  Indeed,  the 
Supreme  Court  has  shown  its  preference  for  the  milder 
view,  by  substantially  quoting  the  second  sentence  of  Jus- 
tice MATTHEWS/  while  omitting  the  first  sentence  from  all 
of  its  later  decisions. 

The  law  of  this  subject  is  well  settled,  and  the  dividing 
line  between  combinations  and  aggregations  is  well  estab- 
lished. Every  case  must  fall  on  one  side  or  the  other  of 
that  line,  and  no  case  can  stand  upon  it.  But  the  facts  in 
particular  cases,  which  will  arise  hereafter,  will  often  make 
it  difficult  to  determine  upon  which  side  of  the  line  those 
cases  respectively  belong.2  Such  decisions  may  some- 
times be  made  by  direct  analysis  without  extensive  com- 
parison ;  but  in  other  cases  reasoning  by  analogy  from 
precedents  must  be  resorted  to,  and  therefore  the  prece- 
dents which  have  not  already  been  mentioned  are  collected 
by  name  in  a  note.3 


1  Brinkerhoff  v.  Aloe,  146  U.  S.  Union  Edge  Setter  Co.  «.  Keith, 
516,  1892.  139  U.  S.  539, 1891 ;  Adams  «.  Stamp- 

2  Standard  Oil  Co.  v.  Southern  Pa-  ing  Co.  141  IT.  S.  539,  1891;  Wright 
cific  Railroad  Co.  48  Fed.  Rep.  110,  v.  Yuengling,   155   U.  S.  53,  1894; 
1891.  Richards  v.  Elevator  Co.  158  U.  S. 

3  Tack  Co.  v.  Mfg.  Co.  109  U.  S.  301,    1895;    Combined  Can  Co.   •». 
120,  1883;  Bussey  v.  Mfg.  Co.  110  Lloyd,    11    Fed.   Rep.    154,    1882; 
U.  S.  145, 1883;  Phillips  v.  Detroit,  Perry  «.  Foundry  Co.  12  Fed.  Rep. 
Ill  U.  S.  607,  1883;    Stephenson  v.  149,  436,  1882;  Doubleday  •».  Roess, 
Railroad  Co.  114  U.  S.  158,  1884;  11  Fed..  Rep.  737,  1880;  Nicodemus 
Beecher  Mfg.  Co.  v.  Atwater  Mfg.  v.  Frazier,  19  Fed.  Rep.  260,  1884; 
Co.  114  U.  S.  523,  1884;  Thatcher  Stutz  v.  Armstrong,  20  Fed.  Rep. 
Heating  Co.  v.  Burtis,  121  U.  S.  843,  1884;  Hayes  v.  Bickelhoupt,  21 
293,  1886;   Hendy  v.  Iron  Works,  Fed.  Rep.  566,  1884;   Mosler  Safe 
127  U.  S.  375,  1887;  Royer  v.  Roth,  &  Lock  Co.  v.  Mosler,  22  Fed.  Rep. 
132  U.  S.  201,  1889;  Fond  Du  Lac  901,  1885;  Watson  «.  Railway  Co. 
County  i>.  May,  137  U.  S.  407,  1890;  23  Fed.   Rep.  445,  1885;    Peard  v. 


34  INVENTION.  [CHAP.  II. 

§  33.  The  rule  of  the  last  section  does  not  state  nor  imply 
that  all  the  parts  of  a  patentable  combination  must  act  at 
the  same  time.  The  fact  on  that  point  is  no  criterion  by 
means  of  which  to  distinguish  invention  from  aggregation. 
Justice  CURTIS,  in  a  Circuit  Court  case,1  stated  the  true 
doctrine  on  this  subject,  and  stated  it  with  marked  lucidity, 
saying  :  "  To  make  a  valid  claim  for  a  combination,  it  is  not 
necessary  that  the  several  elementary  parts  of  the  combi- 
nation should  act  simultaneously.  If  those  elementary 
parts  are  so  arranged  that  the  successive  action  of  each 
contributes  to  produce  some  one  practical  result,  which 
result,  when  attained,  is  the  product  of  the  simultaneous 
or  successive  action  of  all  the  elementary  parts,  viewed  as 
one  entire  whole,  a  valid  claim  for  thus  combining  those 
elementary  parts  may  be  made."  And  that  view  of  the  law 
has  also  been  taken  in  more  recent  times.2 

§  34.  It  is  not  invention  to  duplicate  one  or  more  of  the 
parts  of  a  machine,  unless  that  duplication  causes  a  new 
mode  of  operation  of  the  duplicate  parts. 

In  Dunbar  v.  Myers  3  the  patent  was  based  on  a  circular- 
saw  mill  adapted  to  sawing  lumber  into  thin  sheets  to  be 
used  for  the  backs  of  picture-frames  and  mirrors.  It  dif- 


Johnson,  23  Fed.  Rep.  509,  1885;  45  Fed.  Rep.  564,  1891;  Brickill  v. 

Ames  v.  Spring  Bed  Co.  24  Fed.  Hartford,  49  Fed.  Rep.  372,  1892; 

Rep.  785,  1885;  Phipps  v.  Yost,  26  Brickill  v.  Baltimore,  50  Fed.  Rep! 

Fed.  Rep.  448,  1886;   Troy  Machin-  274,   1892;    Appleton  Mfg.   Co.  9. 

ery  Co.  9.  Bunnell,  27  Fed.  Rep.  Starr  Mfg.  Co.  51  Fed.  Rep.  284, 

810,  1886;  Duesh  e.  Medlar  Co.  30  1892;  Boston  Lasting  Machine  Co! 

Fed.  Rep.  619,  1887;  J.  L.  Mott  Iron  «.  Woodward,   53  Fed.    Rep.  481, 

Works  v.  Skirm,  30  Fed.  Rep.  621,  1893;  Bagley  &  Sewall  Co.  9.  Wood 

1887;  Schmid  9.  Mfg.  Co.  37  Fed.  Pulp  Co.  58  Fed.  Rep.  216    1893 
Rep    347    1889;  Me  ,J  Engine  Co.          ,  Forbush  „  Co        a  ' 

39  Fed.  Rep.  548,  1889;   Jones  9. 


Clow,  39  Fed.  Rep.  785  1889;  Rich-  2  Holmeg  Alarm  ^    CQ              < 

Lo  t        °p  '             ,  ?  eP'  mestic  Tel-  Co-  **  Fed.  Rep.  226, 

1889;  Steam  Gauge  and  Lan.  ^                      Bridge  Co.  „ 

i  £,'•  S2ST£    ,        MP'  Keati<*'  68  Fed-  R*P-  *53   1895. 

845,  1890;  National  Bunching  Ma-  ,  Dunbar                *        ^ 

chine  Co.  9.  Williams  Co.  44  Fed. 
Rep.  193,  1890;  Campbell  t>.  Bailey, 


CHAP.  II.]  INVENTION.  35 

fered  from  former  machines  used  for  the  same  purpose, 
mainly  in  the  fact  that  it  had  a  plate  on  each  side  of  the 
saw  for  the  pupose  of  expanding  the  saw  kerf  and  thus 
keeping  the  sawed  parts  away  from  the  sides  of  the  saw, 
whereas  earlier  machines  had  such  a  plate  orily  on  one  side 
of  the  saw.  The  two  plates  of  the  patented  machine  dif- 
fered from  each  other  in  diameter  and  in  one  or  two  other 
respects,  but  the  function  performed  by  each  of  them  was 
substantially  identical  with  that  performed  by  the  other. 
The  Supreme  Court  therefore  held  the  claim  which  cov- 
ered the  additional  plate  to  be  void  for  want  of  invention. 

In  Slawson  v.  Grand  Street  K.  B.  Co.1  the  patented  im- 
provement consisted  merely  in  putting  an  additional  pane 
of  glass  in  the  fare-box  of  a  street  car,  on  the  side  next  to 
the  passengers,  so  that  they  could  see  into  the  box  as  well 
as  the  driver,  for  whose  use  one  pane  of  glass  was  already 
in  the  side  of  the  box  next  to  him.  The  Supreme  Court 
said  that  the  putting  in  of  that  additional  pane  of  glass  re- 
quired no  more  invention  than  the  putting  of  an  addi- 
tional window  in  a  room  opposite  one  already  there. 

Millner  v.  Voss 2  was  decided  by  Judge  BOND  in  Virginia. 
The  patent  involved,  purported  to  cover  an  arrangement  of 
furnaces  and  flues  in  a  tobacco-curing  house.  It  appeared 
to  differ  from  prior  arrangements  only  in  the  fact  that  each 
of  the  furnaces  had  two  or  more  fire-places  of  different 
sizes  on  each  side  of  a  chimney,  whereas  former  arrange- 
ments had  but  one.  Judge  BOND  wittily  said  that,  "  Where 
one  stove  is  found  to  be  unequal  to  the  heating  of  a  room, 
to  put  another  beside  it,  even  though  smaller,  requires  no 
invention."  Mr.  Millner's  patent  was  therefore  held  to  be  void. 

And  the  rule  of  this  section  has  been  applied  in  cases 
not  so  simple  as  those  above  mentioned ; 3  and  may  be  ap- 
plied still  more  widely  hereafter. 

1  Slawson  v.  Grand  Street  R.  R.  Julien  Electric  Co.   38  Fed.  Rep. 
Co.  107  U.  S.  653,  1882.  138,  1889;  Sugar  Apparatus  Co.  v. 

2  Millner  ».  Voss,  4  Hughes,  262,  Yaryan  Mfg.  Co.  43  Fed.  Rep.  149, 
1882.  1890. 

3  Electrical  Accumulator  Co.  v. 


36  INVENTION.  [CHAP.  II. 

The  exception  which  belongs  to  the  general  rule  of  this 
section,  is  illustrated  by  the  Parker  water-wheel.  Before 
the  date  of  that  invention,  it  was  customary  to  place  a 
single  turbine,  upon  a  vertical  shaft,  in  such  a  way  that  the 
pressure  of  the  water  was  partly  exerted  endwise  of  the 
shaft ;  and  that  pressure,  in  addition  to  the  weight  of  the 
shaft,  and  of  the  wheel,  had  to  be  sustained  by  the  bearing 
of  the  shaft.  Parker  placed  two  such  wheels  in  a  pair, 
face  to  face,  on  the  same  shaft,  and  the  water  entered  be- 
tween them,  so  that  the  downward  pressure  of  the  water 
upon  one  wheel  was  balanced  by  the  upward  pressure  of 
the  water  upon  the  other  wheel.  In  this  case  the  duplica- 
tion of  the  wheel  caused  a  new  mode  of  operation  of  the 
duplicate  parts ;  and  the  patent  was  held  to  be  valid.1 

§  35.  It  is  not  invention  to  omit  one  or  more  of  the  parts 
of  an  existing  thing,  unless  that  omission  causes  a  new 
mode  of  operation  of  the  parts  retained. 

Stow  v.  Chicago,2  decided  by  Judge  BLODGETT,  is  the  case 
which  perhaps  most  exactly  corresponds  with  this  rule. 
The  patent  in  that  case  covered  a  wood  pavement  like  that 
of  Nicholson,  except  that  it  omitted  the  board  foundation 
and  also  the  board  strips  of  that  earlier  pavement.  Judge 
BLODGETT  held  that  those  omissions  constituted  no  inven-f 
tion,  saying  :  "  A  reconstruction  of  a  machine,  so  thafra  less 
number  of  parts  will  perform  all  the  functions  of  the 
greater,  may  be  invention  of  a  high  order,  but  the  omission 
of  a  part,  with  a  corresponding  omission  of  function,  so 
that  the  retained  parts  do  just  what  they  did  before  in  the 
combination,  cannot  be  other  than  a  mere  matter  of  judg- 
ment, depending  upon  whether  it  is  desirable  to  have  the 
machine  do  all,  or  less,  than  it  did  before."  These  views 
were  also  reiterated  and  reinforced  by  the  same  judge  many 
years  after  they  were  stated  and  applied  by  him  in  the 
leading  case.3 


1  Parker  v.  Hulme,  1  Fisher,  44,      92,  1877. 

1849-  3McClain  v.  Ortmayer,  35  Fed. 

3  Stow  v.  Chicago,  3  Bann  &  Ard.      Rep.  287,  1888. 


CHAP.  II.]  INVENTION.  37 

And  the  Supreme  Court,  when  the  latter  case  reached 
that  tribunal,  affirmed  Judge  BLODGETT'S  decision  j1  and  has 
since  rendered  several  decisions  to  the  same  effect.2 

The  exception  which  is  stated  in  the  general  rule  of  this 
section  was  judicially  applied,  and  is  well  illustrated,  in  a 
case  decided  by  Judge  NATHANIEL  SHIPMAN,  where  invention 
was  found  to  reside  in  so  reorganizing  a  meat-mincing  ma- 
chine, as  to  dispense  with  some  of  its  parts,  and  as  to  cause 
the  parts  retained  to  do  the  work  of  the  original  machine.3 
And  in  a  case  which  involved  a  process  patent,  the  Supreme 
Court  has  decided  that  invention  resided  in  omitting  one 
of  the  steps  in  an  old  process,  where  the  resulting  new  pro- 
cess was  the  result  of  careful  and  long-continued  experi- 
ment, and  where  its  utility  was  decidedly  greater  than  that 
of  the  old  process.4  And  Judge  GILBERT  has  held  that  it 
is  invention  to  omit,  from  a  prior  process,  a  step  which 
those  skilled  in  its  performance  considered  essential,  but 
which  the  inventor  proved  to  be  useless.5 

§  36.  It  is  not  invention  to  improve  a  known  structure 
by  substituting  an  equivalent  for  either  of  its  parts.6 

What  is-  signified  in  the  patent  law  by  the  word  "  equiva- 
lent "  is  explained  in  detail  in  the  chapter  on  infringement. 
The  subject  is  of  double  importance,  because  it  relates 
sometimes  to  the  validity  and  sometimes  to  the  infringe- 
ment of  patents.  A.  B.  may  construct  and  may  patent  a 
machine  which  differs  from  the  prior  patented  machine  of 
C.  D.  in  one  part  only.  If  the  courts  decide  that  the  new 
part  inserted,  is  an  equivalent  to  the  old  part  omitted,  then 
the  machine  of  A.  B.  will  be  an  infringement ;  and  it  will 

1  McClain  ».  Ortmayer,  141  U.  S.  5  Pacific  Contracting  Co.  ».  Bing- 

425,  1891.  ham,  62  Fed.  Rep.  283,  1894. 

9  Hat  Pouncing  Machine  Co.  v.  «  Smith  v.  Nichols,  21  Wallace, 

Hedden,  148  U.  S.  489,  1893;  Giles  119,  1874:  Crouch  v.  Roemer,  103 

0.  Heysinger,  150  U.  S.  632,   1893;  U.  S.  797, 1880;  Cochrane  v.  Water- 
Olin  v.  Timken,  155  U.  S.  148, 1894;  man,  1  McArthur's  Patent  Cases, 

3  Enterprise  Mfg.  Co.  v.  Sargent,  54,  1844;  Perry  v.  Foundry  Co.  12 
28  Fed.  Rep.  187,  1886.  Fed  Rep.  436,  1882;  Celluloid  Mfg. 

4  Lawther  v.  Hamilton,  124  U.  S.  Co.   v.  Tower,  26  Fed.  Rep.   451, 

1,  1887.  1885. 


38  INVENTION.  [CHAP.  n. 

not  be  an  invention,  unless  the  new  part,  not  only  performs 
the  function  of  the  part  for  which  it  was  substituted,  but 
also  performs  another  function  by  another  mode  of  opera- 
tion.1 If,  on  the  other  hand,  the  courts  hold  that  the  part 
inserted  is  not  an  equivalent  of  the  old  part  omitted,  then 
the  machine  of  A.  B.  may  be  an  invention,  and  it  will  not  be  an 
infringement  of  any  claim  covering  the  entire  machine  of  C.  D. 

§  37.  It  is  not  invention  to  combine  old  devices  into  a 
new  article  without  producing  any  new  mode  of  operation.2 

This  rule  differs  from  that  of  Section  32  in  not  depending 
upon  absence  of  joint  mode  of  operation,  but  only  upon 
antiquity  of  mode  of  operation.  For  this  reason,  while 
the  invalidity  of  a  patent,  under  the  rule  of  Section  32,  can 
be  shown,  where  it  exists,  from  the  face  of  the  patent ;  the 
invalidity  of  a  patent  under  the  rule  of  this  section  requires 
evidence  aliunde  for  its  establishment,  and  depends  upon 
the  state  of  the  prior  art  for  its  applicability.3  The  mean- 
ing and  scope  of  this  rule,  like  all  the  primary  rules  of  this 
chapter,  require  illustration  and  example  for  full  compre- 
hension ;  and  such  examples  and  illustrations  are  abund- 
antly supplied  by  the  adjudicated  cases. 

Stimpson  v.  Woodman4  involved  a  patent  for  a  machine 
for  pebbling  leather.  It  gave  the  leather  the  pebbled  sur- 
face by  means  of  a  roller,  which  had  the  counterpart  of 
that  surface  engraved  or  sunk  on  its  periphery.  The  same 
kind  of  roller  had  previously  been  used  for  the  same  pur- 
pose by  hand,  and  the  same  kind  of  machine  had  been  used 
for  compressing  leather,  except  that  the  roller  in  it  was 
smooth.  The  Supreme  Court  held  that  the  change  involved 
in  putting  the  old  figured  hand  roller  in  the  place  of  the 
plain  roller  of  the  machine,  involved  no  invention,  and  that 
the  patent  was  void,  if  the  facts  were  as  stated. 


'  *  In  re  Hebbard,  1  McArthur's  582,  1889;  Mahon  v.  McGuire  Mfg. 

Patent  Cases,  550,  1857.  Co.  51  Fed  Rep.  684,  1892. 

2  Burt  v.  Evory,  133  U.   S.  349,  3  Brickill  v.    Hartford,  57  Fed. 

1890;     Florsheim  «.  Schilling.   137  Rep.  217,  1893. 

U.  8. 77, 1890;  Morgan  Envelope  Co.  4  Stimpson  «.  Woodman,  10  Wal- 

«.  Albany  Paper  Co.  40  Fed.  Rep.  lace,  117,  1869. 


CHAP.  II.]  INVENTION.  39 

Heald  v.  Bice  l  was  based  on  a  patent  which  covered  a 
certain  previously  known  straw  feeding  attachment  in  com- 
bination with  a  certain  previously  known  return-flue  boiler, 
that  straw-feeding  attachment  having  been  previously  com- 
bined with  a  fire-box  boiler.  The  utility  of  the  return-flue 
boiler  in  that  combination  was  much  greater  than  that  of 
the  fire-box  boiler,  but  the  Supreme  Court  nevertheless 
held  that  there  was  no  invention  in  the  union  of  the  former 
with  the  straw-feeding  attachment. 

Hall  v.  Macneale 2  shows  the  following  state  of  facts. 
The  patentee  first  made  safe  doors,  the  plates  of  which  were 
held  together  by  cored  conical  arbors,  having  screw  threads 
cut  on  their  exterior  surfaces,  and  later  he  made  other  safe 
doors,  the  plates  of  which  were  held  together  by  solid  con- 
ical arbors  which  had  no  such  screw  threads  as  the  cored 
conical  arbors  had,  and  he  afterwards  obtained  a  patent  for 
the  combination  of  the  plates  of  safe  doors  with  solid  con- 
ical arbors  having  such  screw  threads.  The  Supreme 
Court,  speaking  by  Justice  BLATCHFOED,  said  that  "  There 
was  no  invention  in  adding  to  the  solid  conical  bolt  the 
screw  thread  of  the  cored  conical  bolt." 

Many  Circuit  Court  cases  also  involve  the  doctrine  of 
this  section.  In  one  such  case 3  Justice  BLATCHFOED  held 
a  patent  to  be  void  for  want  of  invention,  which  covered  a 
combination  of  a  whip  socket  having  an  annular  recess  in 
it,  with  a  flexible  elastic  ring  held  in  that  recess  by  it's  own 
elasticity,  and  provided  on  its  inner  edge  with  non-contig- 
uous projections,  separated  so  that  they  could  not  be  pressed 
into  contact  with  each  other  by  the  insertion  of  the  whip 
handle  into  the  ring.  That  decision  was  based  on  the  fact 
that  a  prior  whip  socket  having  an  annular  recess,  had  been 
combined  with  a  plain  rubber  ring  in  that  recess,  and  on 
the  further  fact  that  flexible  elastic  rings  constructed  like 
those  of  the  patent  had  been  combined  with  a  whip  socket 


1  Heald  «.   Rice,  104  U.  S.  754,      1882. 

1881.  »  Searls  v.  Merriam,  22  Off.  Gaz. 

2  Hall  v.  Macneale,  107  U.  S.  90      1040,  1882. 


40  INVENTION.  [CHAP.  II. 

which  had  no  annular  recess,  but  which  clamped  that  ring 
between  the  upper  end  of  that  socket  and  a  cap  above  it. 
Judge  LOWELL  likewise  decided  three  similar  cases.  In 
one  of  them 1  he  held  it  to  be  no  invention  to  give  paper 
collars  the  same  kind  of  surface  that  had  theretofore  been 
impressed  upon  other  articles  of  paper.  In  another2  he 
decided  that  embossed  lines  on  writing  paper  being  old,  and 
ogee  lines  on  other  paper  being  old,  there  was  no  invention 
in  embossing  ogee  lines  on  writing  paper  to  serve  as  guides 
to  the  eye  of  the  writer.  In  a  third  case 3  he  held  that  soft 
base-balls  having  been  covered  with  a  double  cover,  and 
hard  base-balls  having  been  covered  with  a  single  cover, 
there  was  no  invention  in  covering  a  hard  base-ball  with  a 
double  cover.  And  other  still  later  cases  illustrate  the  same 
doctrine.4 

But  while  a  new  combination  with  an  old  mode  of  opera- 
tion is  not  invention,  an  old  combination  with  a  new  mode 
of  operation  may  be  an  invention.  The  Supreme  Court 
found  that  the  Henry  Adams  corn  sheller  was  an  invention, 
and  was  patentable  to  him,  although  his  father,  Augustus 
Adams,  had  previously  made  corn  shellers  from  which  that 
of  Henry  differed  only  in  reversing  the  direction  of  revolu- 
tion of  one  of  its  parts.  That  part  was  the  revolving  beater, 
which  Augustus  Adams  made  to  turn  in  the  direction  oppo- 
site lo  the  desired  motion  of  the  ears  of  corn,  expecting  it 
to  knock  back  any  ear  that  might  ride  upon  another,  and 


1  Union  Paper  Collar  Co.  v.  Le-  Co.  v.  Barbel  Wire  Co.   33  Fed. 
land,  1  Bann.  &  Ard.  491,  1874.  Rep.  273,  1883;  Low  0.  Stove  Co.  36 

2  Cone  v.  Morgan  Envelope  Co.  4  Fed.  Rep.  903,  1888;  Rodebaugh  «. 
Bann.  &  Ard.  109,  1879.  Jackson,  37  Fed.  Rep.  886,  1889; 

3  Mahn  v.  Harwood,  3  Bann.  &  Royer  v.  Coupe,  38  Fed.  Rep.  115, 
Ard.  517,  1878.  1889;  Royer  <o.  Belting  Co.  40  Fed. 

4  Yale  Lock  Mfg.  Co.  «.  National  Rep.  160,  1889;  Gates  Iron  Works 
Bank,  17  Fed.  Rep.  533, 1883;  Kaaps  v.  Fraser,  42  Fed.  Rep.  49,  1890; 
e.  Hartung,  23  Fed.  Rep.  187,  1885;  Abbott  Machine  Co.   v.  Bonn,  51 
Troy  Machinery  Co.  «.  Bunnell,  27  Fed.  Rep.  223,  1892;  Hunt  v.  Gar- 
Fed.  Rep.  810,  1886;  Union  Edge  sed,  51  Fed.  Rep.  678,  1892;  Elec- 
Setter  Co.  v.  Keith,  31  Fed.  Rep.  trie  Ry.  Co.  v.  Jamaica  R.  R.  Co. 
46,  1887;   Washburn  &  Moen  Mfg.  61  Fed.  Rep.  655.  1894. 


CHAP.  II.]  INVENTION.  41 

thus  tend  to  prevent  choking  the  shelling  devices.  This 
mode  of  operation  was  not  successful,  and  Henry  Adams 
reversed  the  revolution  of  the  beater  so  that  its  wings 
moved  in  the  same  direction  as  that  of  the  ears  of  corn,  and 
thus  drove  them  forward  into  the  shelling  devices.  The 
old  combination,  with  that  new  mode  of  operation,  was  en- 
tirely successful,  and  the  patent  thereon  was  therefore  held 
to  be  valid.1 

§  38.  It  is  not  invention  to  use  an  old  thing  or  process 
for  a  new  purpose. 

In  Tucker  v.  Spalding 2  the  patent  covered  a  combination 
of  a  circular  disk  with  removable  saw  teeth.  There  was  a 
prior  combination  of  a  circular  disk  with  removable  cutters 
for  the  purpose  of  cutting  tongues  and  grooves.  The  Su- 
preme Court  held  that  if  what  the  latter  combination  did 
was  in  its  nature  the  same  as  sawing,  and  if  its  structure 
and  its  action  suggested  to  the  mind  of  the  ordinarily  skilful 
mechanic  this  double  use  to  which  it  could  be  adapted  with- 
out material  change,  then  the  combination  of  the  patent  was 
but  a  double  use  of  the  older  combination,  and  was  there- 
fore not  an  invention,  and  not  patentable. 

Brown  v.  Piper 3  is  a  case  in  which  the  Supreme  Court 
held  that  a  patent  for  an  apparatus  for  preserving  fish  and 
other  articles  in  a  close  chamber  by  means  of  a  freezing 
mixture  having  no  contact  with  the  atmosphere  of  the  pre- 
serving chamber,  covered  nothing  but  a  double  use  of  the 
well-known  ice-cream  freezer. 

In  Roberts  v.  Eyer 4  the  same  tribunal  decided  that  to 
change  the  form  and  proportions  of  the  compartments  of  a 
refrigerator,  so  as  to  utilize  the  descending  instead  of  the 
ascending  current  of  endlessly  circulating  air,  was  but  a 
double  use  of  that  refrigerator. 


1  Keystone  Mfg.  Co.  v.  Adams,  8  Brown  v.   Piper,  91   U.   8.   37, 
151  U.  S.  142.  1894.  1875. 

2  Tucker  v.  Spalding,  13  Wallace,  4  Roberts  v.  Ryer,  91   U.  S.  157, 
453,  1871.  1875. 


INVENTION. 


[CHAP.  II. 


Many  other  cases  also  embody  the  rule  of  this  section, 
and   apply   it   to   particular   double    uses   of    old   invent- 


ions.1 


i  King  v.  Gallun,  109  U.  S.  99, 
1883;  Pennsylvania  Railroad  Co.  0. 
Truck  Co.  110  U.  8.  494,  1883; 
Blake  v.  San  Francisco,  113  U.  S. 
679.  1884;  Miller  v.  Foree,  116  U.  S. 
27,  1885;  Dreyfus  v.  Searle,  124  U. 
S.  63,  1887;  Hendy  v.  Iron  Works, 
127  U.  S.  375. 1887;  Crescent  Brew- 
ing Co.  v.  Gottfried,  128  U.  S.  169, 
1888;  Peters  v.  Active  Mfg.  Co.  129 
U.  S.  530,  1889;  Peters  0.  Hanson. 
129  U.  S.  541,  1889;  Aron  0.  Rail- 
way  Co.  132  U.  S.  84,  1889;  Mar- 
chand  v.  Emken,  132  U.  S.  195, 
1889;  Howe  Machine  Co.  0.  Needle 
Co.  134  U.  8.  397, 1890;  St.  Germain 
v.  Brunswick,  135  U.  S.  230,  1890; 
Fond  Du  Lac  County  v.  May,  137 
U.  S.  406,  1890;  Busell  Trimmer 
Co.  v.  Stevens,  137  U  S.  433, 1890; 
Patent  Clothing  Co.  v.  Glover,  141 
U.  S.  563,  1891;  Ansonia  Co.  0. 
Electrical  Supply  Co.  144  U.  S.  18, 
1892:  Smith  v.  Saddle  Co.  148  U.  S. 
679,  1893;  Wollensak  v.  Sargent, 
151  U.  S.  227,  1894;  Gates  Iron 
Works  0.  Fraser,  153  U.  S.  347, 
1894;  Bean  v.  Smallwood,  2  Story, 
408,  1843;  Meyer  v.  Pritchard,  1 
Bann.  &  Ard,  261,  1874;  Adams  v. 
Loft,  4  Bann.  &  Ard.  496,  1879; 
Royer  0.  Mfg.  Co.  20  Fed.  Rep.  853, 
1884;  Howe  Machine  Co.  v.  Needle 
Co.  21  Fed.  Rep.  630,  1884;  Spill  v. 
Celluloid  Mfg.  Co.  21  Fed.  Rep. 
639,  1884;  Celluloid  Mfg.  Co.  v. 
Noyes,  25  Fed.  Rep.  319.  1885; 
Aron  v.  Manhattan  Ry.  Co.  26  Fed. 
Rep.  317, 1886;  Marchand0.  Emken, 
26  Fed.  Rep.  629,  1886;  Shenfield 
v.  Mfg.  Co.  27  Fed.  Rep.  808,  1886; 
Busell  Trimmer  Co.  v.  Stevens,  28 


Fed.  Rep.  575,  1886;  Gloucester 
Isinglass  &  Glue  Co.  v.  Le  Page,  30 
Fed.  Rep.  370, 1887;  Ansonia  Brass 
&  Copper  Co.  v.  Electrical  Supply 
Co.  32  Fed.  Rep.  81,  1887;  Acme 
Hay  Harvesting  Co.  v.  Martin,  33 
Fed.  Rep.  249,  1888;  Mann's  Car 
Co.  v.  Monarch  Car  Co.  34  Fed. 
Rep.  130,  1888;  Babcock  &  Wilcox 
Co.  v.  Pioneer  Iron  Works,  34  Fed. 
Rep.  338,  1888;  Ansonia  Brass  & 
Copper  Co.  v.  Electrical  Supply  Co. 
35  Fed.  Rep.  68, 1888;  Rubber  Har- 
ness Trimming  Co.  0.  Rubber  Comb 
Co.  35  Fed.  Rep.  498,  1888;  Hale  & 
Kilbourn  Mfg.  Co.  v.  Hartford  Mat- 
tress Co.  36  Fed.  Rep.  762,  1888; 
Schmid  0.  Mfg.  Co.  37  Fed.  Rep. 
345,  1889;  Foster  v.  Crossin,  44  Fed. 
Rep.  62, 1890,  American  Road  Ma- 
chine Co.  v.  Pennock  &  Shark  Co. 
45  Fed.  Rep.  255,  1890;  Watson  v. 
Stevens,  47  Fed.  Rep.  117,  1891; 
Whitcomb  0.  Coal  Co.  47  Fed.  Rep. 
660,  1891;  Zinsser  v.  Krueger,  48 
Fed.  Rep.  298,  1891;  Cahoone  Mfg. 
Co.  v.  Harness  Co.  45  Fed.  Rep. 
585,  1891;  Buckingham*.  Iron  Co. 
51  Fed.  Rep.  236, 1892;  Steiner  Ex- 
tinguisher Co.v.  Adrian,  52  Fed.  Rep. 
733,  1892;  Steiner  Extinguisher  Co. 
0.  Adrian,  59  Fed.  Rep.  132,  1893; 
Forgie  0.  Oil- Well  Supply  Co.  57 
Fed.  Rep.  747,  1893;  Consolidated 
Bunging  Apparatus  Co.  0.  Brewing 
Co.  60  Fed.  Rep.  93,  1894;  Brown- 
ing 0.  Telephone  Co.  61  Fed.  Rep. 
845,  1894;  Adams  Electric  Ry.  Co. 
0.  Lindell  Ry.  Co.  63  Fed.  Rep. 
990,  1894;  Schreiber  &  Sons  Co.  0. 
Grim,  65  Fed.  Rep.  221,  1895. 


CHAP.  II.]  INVENTION.  43 

On  the  other  hand,  if  an  old  device  or  process  be  put  to 
a  new  use,  which  is  not  analogous  to  the  old  one,  and  if  the 
adaptation  of  the  subject  to  the  new  use  requires  the 
exercise  of  invention,  such  new  use  will  not  be  denied  the 
merit  of  patentability.1  And  where  a  new  use  of  an  old 
thing  consists  in  combining  it  with  other  things  in  a  new 
organization,  invention  may  be  present.2 

§  39.  The  rule  of  the  last  section  is  an  easy  one  to  apply 
to  a  case  to  which  it  is  relevant,  if  the  thing  or  process  cov- 
ered by  the  patent  in  that  case,  is  used  for  the  new  purpose 
without  being  changed  either  in  construction  or  mode  of 
operation.  That  is,  however,  not  always  the  fact;  and 
where  it  is  not  the  fact,  the  rule  is  of  but  minor  practical 
utility  as  a  guide  to  a  just  conclusion.  It  does  not  apply 
to  using  any  new  thing  for  a  new  purpose,  and  in  order  to 
apply  it  to  anything  which  differs  somewhat  from  the  most 
similar  thing  that  preceded  it,  it  is  necessary  first  to  deter- 
mine whether  that  difference  constitutes  legal  novelty :  to 
determine  whether  the  thing  covered  by  the  patent  is  really 
old.  That  question  must  be  investigated  by  the  aid  of  rules 
other  than  that  of  the  last  section ;  and  when  it  is  deter- 
mined in  the  negative,  it  will  follow  that  the  rule  of  that 
section  does  not  apply  to  the  case. 

§  40.  Want  of  invention,  if  it  really  exists  in  a  particular 
process  or  thing,  can  nearly  always  be  detected  by  one  or 
another  of  the  foregoing  rules.  When  a  case  arises  to  which 
neither  of  them  applies,  and  relevant  to  which  the  mind 
remains  in  uncertainty,  that  uncertainty  may  be  removed 
by  means  of  the  rule  in  Smith  v.  The  Dental  Vulcanite 


1  Ansonia  Co.  v.  Electrical  Sup-  Fed.  Rep.  821,  1892;   Brown  Mfg. 

ply  Co.  144  U.  S.  18,  1892;  Lovell  Co.  v  Mast  53  Fed.  Rep.  585, 1892; 

Mfg.   Co.  v.  Cary,  147  U.  S    637,  Loewer  v.  Ford,  55  Fed.  Rep.  62, 

1893;    Potts  v.  Creager,  155  U.  S  1893;    New  Departure  Bell  Co.  v. 

608,  1895;   Cary  v.  Wolff,  24  Fed  Bevin  Mfg.  Co.  64  Fed.  Rep.  863, 

Rep.  139, 1885;  Rapid  Service  Store  1894. 

Ry.  Co.  v.  Taylor,  43  Fed.  Rep.  253,  2  Telephone  Cases,  126  U.  S.  572, 

1887;  Mack  v.  Optical  Mfg.  Co.  52  1887. 


44  INVENTION.  [CHAP.  n. 

Co.1  namely  :  When  the  other  facts  in  a  case  leave  the 
question  of  invention  in  doubt,  the  fact  that  the  device  has 
gone  into  general  use,  and  has  displaced  other  devices  which 
had  previously  been  employed  for  analogous  uses,  is  suffi- 
cient to  turn  the  scale  in  favor  of  the  existence  of  invention. 
But  the  fact  that  the  device  has  been  forced  into  extensive 
sale,  by  judicious  advertising  and  business  energy,  does  not 
prove  the  presence  of  invention  in  any  case.2 

§  41.  To  change  the  form  of  a  machine  or  manufacture  is 
sometimes  invention,  and  sometimes  it  is  not  invention. 
Where  a  change  of  form  is  within  the  domain  of  mere 
construction,  it  is  not  invention ;  but  where  it  involves  a 
change  of  mode  of  operation,  or  of  function,  or  of  result, 
it  is  invention,  unless  it  is  held  to  be  otherwise  in  pursu- 
ance of  some  rule  other  than  any  that  relates  to  form.3 

§  41a.  To  change  the  proportions  of  a  machine  or  manu- 
facture will  seldom,  or  never  amount  to  invention ;  but  it 
may  be  invention  to  change  the  proportions  of  the  ingre- 
dients of  a  chemical  combination,  or  other  composition  of 
matter.  For  example,  Charles  Goodyear  invented  soft  vul- 
canized rubber,  consisting  of  crude  India  rubber  and  sul- 
phur in  the  proportion  of  one  part  of  sulphur  to  five  parts 


1  Smith  v.  Dental  Vulcanite  Co.  2  McClain  «.  Ortmayer,  141  II.  S. 

93  U.  S.  495.  1876;  Hollister  v  Ben-  427,  1891;  Fox  v.  Perkins,  52  Fed. 

edict  Mfg.  Co.    113  U    S.  72,  1884;  Rep.  213,  1892. 

Adams  v.  Stamping  Co    141  US.  3  Winans  v.  Denmead,  15  Howard. 

542.  1891;  Magowan  ».  Belting  Co.  341,  1853;  Davis*.  Palmer, 2  Brock, 

141  U.  S.  343,  1891;  Gandy  v.  Belt-  310,  1827;  Mabie  «.  Haskell,  2  Cliff, 

ing  Co.  143  U    S.  594,1892;  Barb  510,1865;  Aiken  v.  Dolan,  3  Fisher, 

Wire  Patent,  143  U.  S.  284,  1892;  204,  1867;  United  States  Bung  Mfg. 

Sessions  v.  Romadka.  145  U.  S.  44,  Co.  «.  Independent  Bung  Co.    31 

1892;  Topliff  fl.Topliff,  145,  U.S.  164,  Fed  Rep.  76,  1887;  Electrical  Accu- 

1892;  Hat  Pouncing  Machine  Co.  v.  mulator  Co.  v.  Julien  Electric  Co. 

Hedden,  148  U.  S.  489,  1893;  Kre-  38  Fed.   Rep.  143,  1889;  Parker  «. 

mentz  v.  Cottle  Co.  148  U.  S.  560,  Dickinson,  38  Fed.  Rep.  413;  1889; 

1893;  Duer  «.  Lock  Co.   149  U.  S.  Hammond  Buckle  Co.  •».  Goodyear 

223,   1893;    Keystone    Mfg.  Co.  «.  Rubber  Co.  58  Fed  Rep.  413, 1893; 

Adams,  151  U.  S.  143,  1894;  Olin  v.  Goldie  v.  Iron  Co.  64  Fed.  Rep.  237, 

Timken,  155  U.  ;S.  155,  1894;  Potts  1894. 
v.  Creager,  155  U.  S.  609,  1895. 


CHAP.  II. J  INVENTION.  45 

of  rubber,  mixed  and  subjected  to  a  high  degree  of  heat  ; 
and  afterward  Nelson  Goodyear  invented  hard  vulcanized 
rubber,  consisting  of  equal,  or  comparatively  equal,  parts 
of  sulphur  and  crude  rubber  mixed  and  subjected  to  a  high 
degree  of  heat.  In  this  case,  the  change  in  proportion  of 
the  two  materials  resulted  in  two  entirely  distinct  articles, 
having  entirely  distinct  modes  of  operation  and  functions  ; 
and  the  later  article  was  well  held  to  be  an  invention.1 

§  42.  A  question  of  invention  is  a  question  of  fact  and 
not  of  law  ;2  though  it  is  to  be  determined  by  means  of  the 
rules  of  law  set  forth  in  this  chapter.  In  applying  those 
rules,  patents  are  not  held  void  for  want  of  invention  ex- 
cept where  invention  is  clearly  absent.3 

§  43.  Every  inventor  or  constructor  is  presumed  by  the 
law  to  have  borrowed  from  another  whatever  he  produces 
that  was  actually  first  invented  and  used  by  that  other,  in 
the  United  States;4  or  was  previously  patented 5  or  de- 
scribed in  a  printed  publication  6  in  any  country,  after  hav- 
ing been  invented  by  another.  It  follows  that  such  of  the 
foregoing  rules  as  involve  an  inquiry  into  the  state  of  the 
art  to  which  the  thing  or  process  in  controversy  pertains, 
may  involve  an  inquiry  into  the  date  and  the  character  of 
inventions  which  were  in  fact  unknown  to  the  patentee, 
when  he  produced  that  thing  or  process. 

But  it  is  not  settled  whether  such  an  inquiry  into  the  state 
of  the  art,  can  include  any  foreign  patent,  previously  issued 
on  the  application  of  the  same  inventor,  on  an  invention 
not  near  enough  like  the  invention  covered  by  his  later 
United  States  patent,  to  make  it  true  that  that  invention 

1  Goodyear   v.  Vulcanite  Co.  2  4  Crompton  v.  Knowles,  7  Fed. 

Fisher,  312,  1856.  Rep.  203, 1881;  Williams  «.  Rubber 

3  Poppenhusen «.  Falke,  5  Blatch.  Shoe  Co.  54  Fed.  Rep,  499,  1893; 

49,  1862;  Shuter  t>.  Davis,  16  Fed.  Allen  «.  Steele,  64  Fed.  Rep.  795; 

Rep.  564,  1883.  1894. 

3  Reiter  v.  Jones,  35  Fed.  Rep.  6  Duer  «.  Lock  Co.  149  U.  8.  223, 

431.   1888;    Marvin  «.  Gotshall,  36  1893.                     9 

Fed.  Rep.  908,  1888;    Hunt  Bros.  «  French  «.  Carter,  137  U.  S.  239, 

Fruit  Packing  Co.  v.  Cassidy,   53  1890. 
Fed.  Rep.  260.  1892. 


46  INVENTION.  [CHAP.  n. 

was  first  patented,  or  caused   to  be  patented,  in  a  foreign 
country.1 

§  44.  It  was  shown  in  Section  23  that  patents  are  grant- 
able  for  nothing  but  inventions.  It  is  also  the  law  that 
they  can  be  granted  only  to  those  who  invented  the  inven- 
tions they  respectively  cover,  or  to  the  assignees  or  legal 
representatives  of  those  persons.  The  subjects  of  assign- 
ments and  devolutions  of  inventions  and  patents  are  ex- 
plained in  the  chapter  on  title  ;  but  this  is  the  proper  place 
in  which  to  treat  the  subjects  of  joint  invention  and  sole 
invention. 

§  45.  If  A.  B.  notices  the  need  of  a  new  machine  to  per- 
form a  particular  function,  and  thereupon  conceives  the 
plan  of  such  a  machine,  and  proceeds  to  embody  that  plan 
in  a  successful  working  structure,  and  does  all  this  without 
assistance  from  any  other  person ;  then  it  is  clear  that  he  is 
a  sole  inventor  of  that  machine.  If,  on  the  other  hand,  C. 
D.  notices  the  need  of  a  new  machine  to  perform  a  par- 
ticular function,  and  calls  the  attention  of  E.  F.  to  the 
matter,  and  a  successful  invention  is,  after  many  conver- 
sations between  the  two,  embodied  in  a  working  machine 
constructed  by  the  hands  of  both,  then  it  may  be  that  C. 
D.  is  the  sole  inventor,  or  it  may  be  that  E.  F.  is  the  sole 
inventor,  or  it  may  be  that  both  are  joint  inventors  of  the 
machine  they  produced.  Upon  what  considerations  the 
fact  on  this  point  depends,  it  is  now  in  order  to  point  out. 

§  46.  Every  machine,  before  it  can  be  used,  must  be  con- 
structed as  well  as  invented.  If  one  man  does  all  the  in- 
venting and  another  does  all  the  constructing,  the  first  is 
the  sole  inventor.  Equally  axiomatic  is  the  proposition 
that  if  both  participate  in  the  inventing,  they  are  joint 
inventors,  regardless  of  whether  both  take  part  in  the  con- 
structing. Plainly  true  as  this  last  doctrine  appears  to  be, 
there  are  several  circuit  court  decisions  with  which  it  is 
not  perfectly  harmonious. 


1  Edison  Electric  Light  Co.  v.  U.      Rep.  304,  1892,  Revised  Statutes, 
S.  Electric  Lighting   Co.  52  Fed.      Section  4887. 


CHAP.  II.]  INVENTION.  47 

Jiistice  NELSON  once  decided  that  where  A.  B.  aided  C. 
D.  to  invent  a  machine,  but  did  not  furnish  all  the  informa- 
tion necessary  to  complete  the  invention,  and  where  C.  D. 
thereupon  did  the  required  residue  of  the  inventing,  and 
did  all  of  the  constructing  of  the  machine,  without  further 
help,  he  was  the  sole  inventor  of  that  machine.1 

Justice  SWAYNE,  on  the  other  hand,  decided  that  where 
A.  B.  drew  a  sketch  in  sand  to  represent  his  ideas  of  a  pos- 
sible improvement  of  a  portable  steam  engine,  and  where 
C.  D.  from  that  sketch  made  working  drawings,  and  from 
those  drawings  built  a  working  engine,  without  further 
interference  or  suggestion  from  A.  B.,  the  latter  was  the 
sole  inventor  of  the  improvement  so  produced.2 

Now,  if  we  apply  the  doctrine  of  Justice  NELSON  to  the 
facts  passed  upon  by  Justice  SWAYNE,  we  shall  probably  be 
driven  to  the  conclusion  that  C.  D.,  and  not  A.  B.,  was  the 
sole  inventor  of  that  improvement  in  steam  engines,  because 
it  is  very  improbable  that  any  mere  sketch  in  sand  furnished 
C.  D.  with  all  the  information  necessary  to  complete  that 
invention.  There  must  have  been  something  which,  in  the 
language  of  Justice  NELSON,  "  was  left  for  him  to  devise  and 
work  out  by  his  own  skill  or  ingenuity,  in  order  to  complete 
the  arrangement." 

In  the  case  before  Justice  NELSON  it  was  C.  D  ,  and  in 
that  before  Justice  SWAYNE  it  was  A.  B.  who  had  obtained 
a  sole  patent.  In  each  case  the  defendant  insisted  that  the 
other  man  concerned  in  the  production  of  the  invention, 
and  not  the  patentee,  was  the  sole  inventor,  and  in  both 
cases  that  contention  was  evidently  unfounded  in  fact.  The 
patents  were  priina  facie  evidence  of  their  own  validity, 
and  not  being  attacked  at  their  vulnerable  points  were  nec- 
essarily sustained.  Had  the  defendant  in  either  case  urged 
the  defence  of  joint  invention  as  being  fatal  to  a  sole  patent, 
then  the  true  question  would  have  been  before  the  court ; 
and  the  charge  to  the  jury  in  the  first  case,  or  the  opinion 


1  Pitts  v.  Hall,   2    Blatch.  229,          2  Blandy  <v.  Griffith,  3  Fisher,  609, 
1851.  1869. 


48  INVENTION.  [CHAP.  n. 

of  the  judge  in  the  other,  would  have  been  adapted  to  that 
issue.  The  failure  of  counsel  to  take  the  proper  ground  of 
defence  in  the  two  cases,  deprived  the  profession  and  the 
public  of  what  would  doubtless  have  been  very  instructive 
deliverances  relevant  to  the  point  under  present  inspection. 
Taking  into  account,  however,  the  facts  of  the  two  cases 
and  the  lack  of  harmony  between  the  doctrines  involved  in 
the  two  opinions,  it  is  safest  to  lay  them  both  out  of  view 
in  the  present  connection.  Both  cannot  be  followed  by  the 
federal  courts,  and  it  is  not  probable  that  either  will  be. 
The  question  has  not  been  squarely  presented  to  such  a 
tribunal,  but  when  it  is  so  presented  it  will  doubtless  be 
decided  that  where  two  or  more  persons  exercised  their  in- 
ventive faculties  in  the  mutual  production  of  a  new  and 
useful  process  or  thing,  those  persons  are  joint  inventors 
thereof,  regardless  of  whether  one,  or  part,  or  all,  or  neither 
of  those  persons  constructed  or  helped  to  construct  the  first 
specimen  of  that  thing,  or  performed  or  helped  to  perform 
the  first  instance  of  that  process. 

§  47.  The  case  of  the  Agawam  Co.  v.  Jordan l  is  not  in- 
consistent with  what  is  advanced  at  the  close  of  the  last 
section.  The  defendant  in  that  case  did  not  set  up  a  joint 
invention  by  the  patentee  and  another,  but  set  up  an  alleged 
sole  invention  by  that  other  of  the  thing  patented.  The 
most  that  it  could  get  its  witness  to  testify,  however,  was 
that  he  suggested  to  the  patentee  one  of  the  parts  of  one  of 
the  combinations  secured  by  the  patent,  but  that  the  pat- 
entee himself  contrived  the  devices  by  means  of  which  that 
part  was  incorporated  into  that  combination.  The  patentee 
did  not  claim  the  suggested  part  as  his  invention,  but  only 
claimed  several  new  combinations  of  old  devices,  and  among 
the  number  a  combination  of  several  things,  one  of  which 
was  said  to  have  been  suggested  by  the  defendant's  witness. 
In  that  state  of  facts  it  was  clear  that  the  latter  was  neither 
sole  nor  joint  inventor  of  anything  covered  by  the  patent, 
and  accordingly  the  Supreme  Court  so  decided. 

1  Agawam  Co.  v.  Jordan,  7  Wallace,  583,  1868. 


CHAP.  II.]  INVENTION.  49 

And  the  case  of  Forgie  v.  Oil  Well  Supply  Co.1  is  also 
consistent  with  the  views  of  the  last  section.  In  that  case 
Forgie  wanted  a  machine  by  means  of  which  to  exert  great 
power  horizontally,  and  it  occurred  to  him  that  a  lifting 
jack  might  be  somehow  used  for  the  purpose.  With  this 
view  he  called  on  Barrett,  who  was  the  inventor  and  manu- 
facturer of  a  particularly  good  lifting  jack,  and  presented 
his  case  to  him.  Barrett  thereupon  caused  his  lifting  jack 
to  be  reconstructed  on  a  plan  prescribed  by  himself,  and 
thereafter  made  a  number  of  the  reconstructed  tools  for 
Forgie,  who  sold  them  to  others  who,  like  himself,  wanted 
such  a  machine.  They  tilled  the  vacant  place  by  entirely 
successful  operation,  and  became  very  popular.  Thereupon 
Forgie  applied  for  and  obtained  a  patent  on  the  recon- 
structed machine  as  his  own  invention;  but  the  Circuit 
Court  of  Appeals  for  the  third  circuit  held  the  patent  to  be 
void,  because  the  machine  had  been  produced  by  Barrett, 
and  not  by  Forgie. 

§  48.  In  order  to  make  an  invention  of  importance,  a  con- 
siderable fund  of  general  knowledge  must  be  possessed  by 
the  inventor.  Where  that  fund  was  acquired  before  he 
undertook  his  invention,  it  is  easy  to  see  that  those  who 
imparted  it,  are  not  thereby  made  joint  inventors  with  him. 
Though  not  quite  so  obvious,  it  is  equally  certain  that  if, 
pending  his  experiments,  an  inventor  seeks  and  secures  one 
point  of  information  from  a  scientist,  and  another  from  a 
machinist,  and  a  third  from  a  book,  he  is  not,  on  account  of 
having  done  the  first  two,  any  less  a  sole  inventor  than  he 
is  on  account  of  having  done  the  last.2 

§  49.  To  constitute  a  man  an  inventor,  it  is  not  necessary 
for  him  to  have  skill  enough  to  embody  his  invention  in  a 
working  machine,  or  in  a  model,  or  even  in  a  drawing.  If  a 
man  furnishes  all  the  ideas  needed  to  produce  the  invention 
aimed  at,  he  may  avail  himself  of  the  mechanical  skill  of 
others,  to  practically  embody  or  represent  his  contrivance, 


1  Forgie  «.  Oil  Well  Supply  Co.          a  O'Reilly  «.  Morse,  15  Howard, 
58  Fed.  Rep.  871,  1893.  62,  1853. 


50  INVENTION.  [CHAP.  n. 

and  still  be  the  sole  inventor  thereof.1  But  it  is  not  inven- 
tion to  conceive  a  result,  and  then  employ  another  to  pro- 
duce that  result.2 

§  50.  Under  the  statute,  only  he  or  they  who  have  invented 
a  particular  thing  can  lawfully  obtain  a  patent  therefor,  ex- 
cept in  cases  where  the  applicant  is  an  assignee  or  legal 
representative  of  the  true  inventor  or  inventors.  It  follows 
that  if  one  of  two  or  more  persons  obtain  a  patent  for  a 
process  or  thing  which  was  jointly  invented  by  them  all, 
that  patent  is  not  valid.3  In  such  a  case  it  is  not  true  that 
the  patentee  invented  the  thing  patented.  He  only  helped 
to  invent  it.  If  he  could  have  a  valid  patent  for  that  thing 
or  process,  each  of  his  co-inventors  could  do  likewise,  and 
each  of  several  persons  would  possess  the  exclusive  right 
to  the  same.  As  to  each  other,  such  a  state  of  affairs 
among  patentees  would  be  impossible,  and  as  to  the  public 
it  would  be  intolerable. 

§  51.  So  also  if  several  persons  obtain  a  joint  patent  for 
what  was  invented  solely  by  one  of  them,  that  patent  is 
void.4  And  where  several  independent  inventions  are 
claimed  by  several  different  claims  in  a  joint  patent,  and 
where  one  of  those  inventions  was  made  by  one  of  the  joint 
applicants  for  the  patent,  without  any  co-operation  of 
another  joint  applicant ;  the  claim  of  the  patent,  which 
covers  that  invention  is  void.5  There  is  no  statutory  au- 
thority to  grant  a  patent  or  a  claim  to  a  non-inventor  jointly 
with  an  inventor,  without  an  assignment  or  a  death,  any 
more  than  there  is  to  grant  a  patent  to  a  non-inventor 
alone.  But  very  convincing  evidence  is  required  to  estab- 


1  Sparkman  v.  Higgins,  1  Blatch.  mer's  Appeal,  58  Penn.  164,  1864. 
209,    1846 ;     Stearns    ft.    Davis,    1          4  Eansom  v.  New  York,  1  Fisher, 
McArthur's  PatentCases,  696, 1859.  269, 1856;  Hotchkiss  ®.  Greenwood, 
Smith  v.  Stewart,  55  Fed.  Rep.  483,  4 McLean,  461, 1848;  Barretts.  Hall, 
1893.  1  Mason,  473, 1818;  Royer®.  Coupe, 

2  Streat  v.  White,   35  Fed.   Rep.  29  Fed.  Rep.  363,  1886;   Stewart  ». 
426,  1888.  Tenk,  32  Fed.  Rep.  665,  1887. 

3  Arnold  v.  Bishop,  1  McArthur's         6  Heulings  v.  Reid,  58  Fed.  Rep. 
Patent  Cases,  36,  1841 ;  H.  T.  Slem-  868,  1893. 


CHAP.  II.]  INVENTION.  51 

lish  the  invalidity  of  a  patent  on  the  ground  stated  in  this 
section.1 


1  Button  Fastener  Co.  ®.  Lucas,      Rep.   585,  1888 ;    Priestly  v.   Mon- 
28  Fed.  Rep.  371,  1886  ;  Schlicht  &      tague,  47  Fed.  Rep.  651,  1891. 
Field  Co.  v.  Machine  Co.  36  Fed. 


CHAPTEE  III. 

NOVELTY. 


52.  Novelty  necessary  to   patent- 
ability. 

53.  Novelty  defined. 

54.  Not  negatived  by  knowledge  or 
use  in  a  foreign  country. 

55.  Not  negatived  by  private  patent 
granted  in  a  foreign  country. 

56.  Prior  printed  publications. 

57.  Fulness  of  prior  patents  and 
printed  publications. 

58.  Novelty  not  negatived  by  any 
abandoned  application. 

59.  Qualification  of  the  last  rule. 

60.  Successful  prior  applications. 

61.  Novelty  not  negatived  by  any 
unpublished  drawing,  or  prior 
model. 

62.  Novelty  not  negatived  by  any- 
thing substantially  different. 

63.  Abandoned  experiments. 

64.  Novelty  in  cases  of  designs. 

65.  Novelty  not  negatived  by  any- 
thing   apparently    similar    or 
chemically  identical,  but  prac- 
tically useless. 


66.  Novelty  not  negatived  by  an- 
tiquity of  parts. 

67.  Novelty  not  negatived  by  prior 
acccidental  and  not  understood 
production. 

68.  Novelty  not  negatived  by  any- 
thing neither  designed,  nor  ap- 
parently adapted,  nor  actually 
used  for  the  same  purpose  as  the 

69.  Comparative  dates,  [invention. 

70.  Dates  of  patented  inventions. 

71.  Novelty  is  negatived  by  one  in- 
stance of  prior  knowledge  and 
use  in  this  country. 

72.  Novelty  is  negatived  by  prior 
making  without  using. 

73.  Inventor's  lack  of  knowledge 
of  anticipating  matter  is  imma- 
terial. 

74.  Old  thing  derived    from    new 
source. 

75.  Questions  of  novelty  are  ques- 
tions of  fact. 

76  Burden   of   proof    relevant   to 
novelty. 


§  52.  THE  statutes  of  the  United  States  have  always  pro- 
vided that  anything  to  be  patentable  must  be  new.  State- 
ments that  some  things  are  not  patentable  because,  though 
new  in  a  commercial  sense,  they  are  not  new  in  the  eye  of. 
the  patent  law,  occur  in  a  few  reported  cases.  In  every 
such  instance,  however,  it  would  have  been  more  accurate 
to  say  that  somethings  are  not  patentable  because,  though 
new  things,  they  are  not  invented  things.  Such  things  lack 
patentability  not  because  they  lack  newness,  but  because 

52 


CHAP.  III.]  NOVELTY.  53 

they  lack  invention.  The  subject  belongs  to  the  domain 
of  invention  and  not  to  that  of  novelty,  and  it  is  therefore 
treated  in  the  second  chapter  of  this  book.  With  this  ex- 
planation, it  is  not  untrue  nor  misleading  to  say  that  what- 
ever is  really  new,  is  new  in  the  eye  of  the  patent  law. 

§  53.  Many  things  are  new  in  the  eye  of  the  patent  stat- 
utes, in  addition  to  those  things  which  are  really  new.  The 
word  has  therefore  a  broader  signification  in  those  statutes 
than  it  has  in  the  dictionaries  ;  but  that  broader  meaning  is 
not  capable  of  a  short  definition.  Novelty  is  the  conven- 
tional name  of  the  statutory  newness,  but  that  name  does 
not  indicate  the  boundaries  of  the  thing  which  it  denotes. 
Those  boundaries  can  be  delineated  only  by  enumerating 
and  explaining  those  classes  of  facts  which  fall  within  them, 
but  which  fall  without  the  boundaries  of  actual  newness  ; 
those  classes  of  facts  which  negative  newness,  but  Which  do 
not  negative  novelty. 

§  54.  Novelty  is  not  negatived  by  prior  knowledge  and 
prior  use  in  a  foreign  country  of  the  thing  patented,  pro- 
vided the  patentee,  at  the  time  of  making  his  application 
for  a  United  States  patent,  believed  himself  to  be  the  first 
inventor  of  the  thing  covered  thereby,  and  provided  that 
thing  had  nowhere  been  patented  to  another,  and  nowhere 
been  described  in  a  printed  publication.1 

Knowledge  in  the  mind  of  a  man  who  lives  in  this  country, 
that  the  patented  thing  was  known  and  used  in  a  foreign 
country  before  its  invention  here,  is  not  such  knowledge  in 
this  country  as  will  negative  the  novelty  of  the  patent  cov- 
ering that  thing.8 

§  55.  Novelty  is  not  negatived  by  any  United  States  pat- 
ent which  was  issued  after  the  contested  invention  was 
made,  though  applied  for  before  that  event,3  nor  by  any 
prior  private  patent  granted  in  any  foreign  country  ,4  nor 


1  Revised  Statutes,  Sections  4887  3  American    Roll    Paper  Co.    «. 
and  4923.  Weston,  45  Fed.  Rep.  689,  1891. 

2  Doyle  v.  Spalding,  19  Fed.  Rep.  4  Brooks  v.  Norcross,  2  Fisher, 
746,  1884.  661,  1851. 


54  NOVELTY.  [CHAP.  III. 

by  any  public  patent  granted  in  England,  unless  the  latter 
was  sealed  before  the  person  obtaining  the  American  patent 
made  the  invention.1  In  neither  of  those  three  cases  can  it 
be  truly  said  that  the  invention  was  antecedently  patented, 
and  therefore  such  transactions  do  not  come  within  the 
statute ;  but  the  application  in  the  first  case  may  negative 
novelty.  And  also,  it  is  safe  to  say  that  novelty  would  be 
negatived  by  a  full  description  in  the  specification  of  a  prior 
public  patent  of  the  thing  covered  by  an  American  patent, 
even  though  that  thing  was  not  covered  by  the  claims  of  the 
prior  patent,  and  therefore  not  patented  to  the  prior  inven- 
tor.3 This  doctrine  must  result  from  the  fact  that  whatever 
is  well  described  in  a  patent  is  patented,  that  is,  made  pa- 
tent to  the  public,  whether  it  is  claimed  by  the  patentee  or 
not.  Indeed  the  Supreme  Court  has  decided  that  novelty 
is  negatived  by  a  prior  patent  which  shows  the  device  in 
its  drawings  and  describes  it  in  the  specification,  but  does 
not  clearly  state  its  use.3 

§  56.  A  printed  publication  is  anything  which  is  printed, 
and,  without  any  injunction  of  secrecy,  is  distributed  to  any 
part  of  the  public  in  any  country  ;  and  such  a  publication 
may  negative  novelty.4  Indeed,  it  seems  reasonable  that  no 
actual  distribution  need  occur,  but  that  exposure  of  printed 
matter  for  sale  is  enough  to  constitute  a  printed  publication. 
But  the  mere  existence  of  a  printed  thing  is  not  a  printed 
publication.5  Whether  a  drawing,  either  in  a  patent  or 
printed  publication,  if  unaccompanied  by  description  in 
words,  will  negative  novelty  in  a  machine  or  manufacture, 
is  an  unsettled  question.6 

1  Siemens  v.  Sellers;  123  U.  S.  283,      Rep.  613,  1894. 

1887;  Bliss  v.  Merrill,  33  Fed.  Rep.  3  stow  v.  Chicago,  104  U.  S.  547, 

40,   1887;    Electrical  Accumulator  1881. 

Co.  v.  Julien  Electric  Co.  38  Fed.  4  Rosenwasser  «.  Spieth,  129  U.  S. 

Rep.    141,    1889;    American    Roll-  47,  1889. 

Paper  Co.  v.  Weston,  45  Fed.  Rep.  6  Britton  v.   White  Mfg.  Co.  61 

691,  1891.  Fed.  Rep.  95,  1894. 

2  United  States  Bung  Mfg.  Co.  ®.  6  Judson  v.  Cope,  1  Fisher,  619, 
Independent  Bung  Co.  31  Fed.  Rep.  1860;  Reeves  v.  Bridge  Co.  5  Fisher, 
79,  1887;  Saunders  «.  Allen,  60  Fed.  456,  1872. 


CHAP.  III.]  NOVELTY.  55 

Its  answer  depends  upon  the  meaning  of  the  word  "  de- 
scribed "  in  the  statute.  If  that  meaning  is  confined  to  the 
last  definition  of  Webster,  then  only  description  m  words 
can  negative  novelty ;  but  if  it  covers  also  the  first  defini- 
tion of  Webster,  then  representation  by  lines,  as  in  a  drawing, 
must  have  that  effect.  Inasmuch  as  drawings  can  generally 
give  information  which  is  as  clear  as  that  which  words  alone 
can  give,  relevant  to  the  construction  and  character  of  a 
machine  or  manufacture,  there  seems  to  be  no  meritorious 
reason  for  their  not  having  the  same  effect  on  the  novelty 
of  subsequent  patents.  No  injustice  can  result  from  such 
a  rule,  because  in  order  to  have  any  effect  on  such  novelty, 
drawings  as  well  as  words  must  be  able  to  endure  the  test 
stated  in  the  next  section.  And  it  is  undoubtedly  true,  that 
lack  of  description  in  words  does  not  avert  negation  of 
novelty  in  a  design,  where  that  design  is  shown  in  the  draw- 
ing of  a  prior  patent  or  printed  publication.1 

§  57.  Novelty  is  not  negatived  by  any  prior  patent  or 
printed  publication,  unless  the  information  contained 
therein,  is  full  enough  and  precise  enough  to  enable  any 
person  skilled  in  the  art  to  which  it  relates,  to  perform  the 
process  or  make  the  thing  covered  by  the  patent  sought  to 
be  anticipated.2  But  a  difference,  which  consists  of  a  mere 
omission  of  something  which  a  skilful  mechanic  would  sup- 
ply, is  not  fatal  to  anticipation.3  The  phrase  "  skilful  me- 
chanic," as  used  in  this  connection,  does  not  include  me- 
chanics who  are  skilful  only  in  methods  of  servile  imitation. 
It  refers  only  to  mechanics  who  know  how  to  vary  form 
without  varying  substance,  and  who,  in  constructing  a  ma- 
chine from  a  printed  description,  or  from  Patent  Office 
drawings,  could  readily  and  would  freely  alter  proportions 


1  Britton  v.  White  Mfg.  Co.  61  v.  Dickey,  4  Fisher,  532,   1871 ;  Ca- 
Fed.  Rep.  96,  1894.  hill  v.  Brown,  3  Bann.  &  Ard.  580. 

2  Seymour  v.  Osborne.ll  Wallace,  1878;  Hammerschlag  v.  Scamoni,  7 
516,  1870;  Cawood  Patent,  94  U.  S.  Fed.  Rep.  584,  1881. 

704,  1876;  Downton  v.  Milling  Co.  3  Chase  v.    Fillebrown,  58  Fed. 

108  U.  S.  466,  1882;  Eames  v.  An-  Rep.  378,  1898. 
drews,  122,  U.  S.  66,  1886;  Roberts 


56  NOVELTY.  [CHAP.  in. 

and  change  details  in  order  to  adapt  the  contrivance  to  a 
particular  use,  or  in  order  to  secure  greater  merit  of  work- 
manship for  the  thing  constructed. 

And  where  the  claim  is  for  an  article  of  manufacture,  it 
may  be  anticipated  by  a  prior  patent  or  printed  publica- 
tion, which  describes  the  article,  without  describing  any 
process  of  making  it,  provided  a  knowledge  of  the .  article 
would  teach  a  skilful  mechanic  some  process  of  making  it.1 

§  58.  Novelty  is  not  negatived  by  any  prior  abandoned  ap- 
plication for  a  patent.2  Abandoned  applications  for  patents 
are  not  by  the  statutes  made  bars  to  patents  to  later  appli- 
cants. They  furnish  no  evidence  that  any  specimen  of  the 
things  they  describe  was  ever  made  or  used  anywhere. 
Being  only  pen  and  ink  representations  of  what  may  have 
existed  only  as  mental  conceptions  of  the  men  who  put  them 
upon  paper,  they  do  not  prove  that  the  things  which  they 
depict  were  ever  known  in  any  country.  Nor  can  they  be 
classed  among  printed  publications,  for  they  are  usually  in 
writing,  and  are  not  published  otherwise  than  by  being 
placed  on  file  in  the  Patent  Office.  Any  person  may  pro- 
cure a  certified  copy  of  an  abandoned  application,3  and 
publish  it,  but  such  a  publication  will  operate  as  of  its  own 
date,  and  not  as  of  the  date  of  the  application. 

§  59.  When  there  is  evidence  that  he  who  made  and 
abandoned  an  application  for  a  patent,  made  also  some 
effort  to  carry  his  invention  into  practical  use,  then  that 
application  is  admissible  in  evidence  to  aid  the  court  to  de- 
termine the  date  and  the  nature  of  the  invention  which  was 
sought  to  be  embodied  in  a  working  form.  If,  however, 
upon  the  whole  of  the  evidence,  it  appears  that  what  the 
inventor  did,  outside  of  his  abandoned  application,  did  not 
amount  to  enough  to  negative  the  novelty  of  a  subsequent 


1  In  re  Schaeffer,  66  Off.  Gaz.  514,  Bann.  &  Ard.    177,   1874;    Lyman 
1893.  Ventilating  &  Refrigerator  Co.  ». 

2  Corn-planter    Patent,  23    Wai-  Lalor,  1  Bann.  &.  Ard.  403,  1874. 
lace,  211,  1874;  N.  W.  Extinguisher  3  United  States  v.  Hall,  7  Mackey 
Co.  a.   Phila.    Extinguisher  Co.  1  14,  1888. 


CHAP.  III.J  NOVELTY.  57 

patent  to  a  later  inventor,  then  that  abandoned  application 
becomes  immaterial  to  that  issue.1 

§  60.  Novelty  is  not  negatived  by  any  successful  apppli- 
tion  for  a  patent,  nor  by  any  documents  pertaining  thereto, 
other  than  the  letters  patent  issued  in  pursuance  thereof.2 
When  such  an  application,  or  such  a  document,  is  offered 
to  prove  the  existence  of  something  which  is  not  shown  by 
the  letters  patent  themselves,  the  justice  and  propriety  of 
this  rule  is  apparent  at  a  glance.  The  rule  necessarily  fol- 
lows from  the  same  considerations  as  those  which  reject  an 
abandoned  application,  when  an  abandoned  application  is 
offered  to  negative  novelty.  But  where  a  successful  appli- 
cation is  offered  only  to  prove  the  date  of  the  invention 
claimed  in  the  resulting  patent,  an  exception  to  the  rule 
has  been  established.2 

§  61.  Novelty  is  not  negatived  by  any  prior  unpublished 
drawings,  no  matter  how  completely  they  may  exhibit  the 
patented  invention,4  nor  by  any  prior  model,  no  matter  how 
fully  it  may  coincide  with  the  thing  covered  by  the  patent.5 
The  reason  of  this  rule  is  not  stated  with  fullness  in  either 
of  the  cases  which  support  it,  but  that  reason  is  deducible 
from  the  statute  and  from  the  nature  of  drawings  and  of 
models.  The  statute  provides,  relevant  to  the  newness  of 
patentable  machines  and  manufactures  and  improvements 
thereof,  that  they  shall  not  have  been  previously  known  or 
used  by  others  in  this  country.6  Now,  it  is  clear  that  to  use 


1  Corn-planter    Patent,    23  Wai-  22  Fed.  Rep.  159,  1884;   Pennsyl- 
lace,  211, 1874.  vania  Diamond  Drill  Co.  v.  Simp- 

2  Howes  v.   McNeal,  5  Bann.  &  son,  29  Fed.  Rep  291,  1886. 

Ard.  77,  1880.  5  Gaboon  c.   Ring,    1    Cliff,    593, 

3  Westinghouse    «.    Gas    Co.  43  1861;     Stainthorp  ®.    Humiston,  4 
Fed.  Rep.  588,  1890;  Barnes  Co.  v.  Fisher,  107,  1864;  Johnson  v.  Mc- 
Walworth  Co.  51  Fed.    Rep.    88,  Cullough,  4  Fisher,  170,  1870;  Still- 
1892;  60  Fed.  Rep.  606, 1894.  well  <te  Bierce  Mfg.  Co.  t>.  The  Cin- 

4  Ellithorp  v.  Robertson,  4  Blatch.  cinnati  Gas  Light  &  Coke  Co.  1 
309,1859;  Draper®.  Potomska Mills.  Bann.  &  Ard.  610,  1875;  Bowers  v. 
3  Bann.  &  Ard.  214,  1878;  Detroit  Von  Schmidt,  63    Fed.  Rep.  577, 
Lubricator  Mfg.  Co.  v.  Renchard,  9  1894. 

Fed.  Rep.  293,  1881;  Odell  t>.  Stout,  •  Revised  Statutes,  Section  4886. 


58  NOVELTY.  [CHAP.  III. 

a  model  or  a  drawing  is  not  to  use  the  machine  or  manu- 
facture which  it  represents ;  and  it  is  equally  obvious  that 
to  know  a  drawing  or  a  model  is  not  the  same  thing  as 
knowing  the  article  which  that  drawing  or  model  more  or 
less  imperfectly  pictures  to  the  eye.  It  follows  that  neither 
of  those  things  can  negative  the  newness  required  by  the 
statute.  Nor  is  the  statutory  provision  on  this  point  lack- 
ing in  good  reasons  to  support  it.  Private  drawings  may 
be  mislaid  or  hidden,  so  as  to  preclude  all  probability  of 
the  public  ever  deriving  any  benefit  therefrom ;  and  even  if 
they  are  seen  by  several  or  by  many,  they  are  apt  to  be 
understood  by  few  or  by  none.  Models  also  are  liable  to 
be  secluded  from  view  and  to  suffer  change,  and  thus  to  fail 
of  propagation.  Moreover,  if  a  patent  could  be  defeated 
by  producing  a  model  or  a  drawing  to  correspond  there- 
with, and  by  testifying  that  it  was  made  at  some  sufficiently 
remote  point  of  time  in  the  past,  a  strong  temptation  would 
be  offered  to  perjury.  Several  considerations  of  public 
policy  and  of  private  right  combine,  therefore,  to  justify 
the  rule  of  this  section. 

§  62.  Novelty  is  not  negatived  by  anything  not  substan- 
tially identical  with  the  subject  of  the  patent,  even  though 
the  function  of  the  prior  thing  was  identical  with  that  of 
the  patented  article.  This  rule  necessarily  follows  from  the 
doctrine  that  a  valid  patent  may  be  granted  for  a  new  means 
of  producing  an  old  result.1  And  substantial  identity  is 
also  consistent  with  substantial  difference,  for  novelty  is  neg- 
atived by  a  prior  process  or  mechanism  which  included  the 
subject  of  the  patent,  and  also  some  other  process  or  de- 
vice. But  if  a  patented  thing  possesses  distinct  and  appar- 
ently important  characteristics  not  possessed  by  any  alleged 
anticipation,  the  defense  for  want  of  novelty  will  fail.  But 
a  thing  which  will  not  defeat  a  patent  for  want  of  novelty 
may  defeat  it  for  want  of  invention.2  It  will  do  so  wherever 
the  observed  difference  corresponds  in  character  with  either 


1  O'Reilly  v.  Morse.  15  Howard,          2  Untermeyer  «.  Freund,  58  Fed. 
62, 1853.  Rep.  209,  1893. 


CEAP.  III.]  NOVELTY.  59 

of  those  differences  between  a  patented  thing  and  the  prior 
art,  which  in  the  second  chapter  of  this  book  were  shown 
to  be  insufficient  to  constitute  invention. 

§  63.  The  rule  of  the  last  section  will  probably  govern 
every  case  which  justly  comes  within  the  doctrine  that  nov- 
elty is  not  negatived  by  any  unsuccessful  abandoned  experi- 
ment. That  rule  is  far  more  reliable  than  that  doctrine, 
because  the  latter  is  subject  to  such  qualifications  and  ex- 
planations that  its  practical  utility  in  deciding  cases  is  but 
small.  A  thing  may  have  been  abandoned  and  still  nega- 
tive the  novelty  of  a  thing  independently  invented  long 
after  that  abandonment.1  Such  will  be  the  result  if  the 
earlier  thing  was  identical  with  the  later,  and  was  used  long 
enough  to  show  that  it  would  work.2 

If  a  given  experimental  device  was  unsuccessful  in  the 
hands  of  its  contriver,  that  fact  must  have  been  due  either 
to  one  or  more  faults  of  principle,  or  to  one  or  more  faults 
of  construction,  or  to  one  or  more  faults  of  each  of  these 
kinds.  If  partly  or  wholly  due  to  any  fault  of  principle, 
that  very  fact  shows  that  the  unsuccessful  device  was  sub- 
stantially different  from  subsequent  successful  patented 
things.  For  that  reason  alone  it  would  have  failed  to  nega- 
tive the  novelty  of  those  things,  even  if  it  had  not  been 
unsuccessful.  If,  on  the  other  hand,  a  prior  device  was 
unsuccessful  merely  because  its  construction  was  weak,  it  is 
far  from  certain  that  it  will  not  be  held  to  negative  the  nov- 
elty of  subsequent  devices  identical  with  it  in  plan,  mode 
of  operation,  and  function.3 

The  truth,  therefore,  appears  to  be  that  an  unsuccessful 
abandonded  experiment  may  possibly  negative  the  novelty 

1  Waterman  v.  Thomson,  2  Fisher,  Fisher,   588,   1871;    Stephenson    v. 
463, 1863;  Shoup  v  Henrici.  2  Barm.  Railroad  Co.  14  Fed.  Rep.  459, 1881; 
&  Aid.  249,   1876;    N.  W.   Extin-  Electrical  Accumulator  Co.  v.  Julien 
guisher  Co.  v.  Phila.  Extinguisher  Electric  Co.  38  Fed.  Rep.  131,  1889; 
Co.  1  Bann.  &  Ard.  177,  1874;  Me-  American  Roll  Paper  Co.  v.  Wes- 
Nish,  v.  Everson,  5  Bann.  &  Ard.  ton,  51  Fed.  Rep.  240, 1892. 

484,  1880.  3  Pickering  v.  McCullough,    104 

2  Gayler  v.  Wilder,  10  Howard,      U.  S.  319,  1881. 
477,  1850;  Sayles  v.  Railway  Co.  4 


60  NOVELTY.  [CHAP.  III. 

of  a  later  invention,  and  that  where  it  fails  to  have  that 
effect,  it  would  have  failed,  even  if  it  had  been  neither  un- 
successful nor  abandoned.  Novelty  is  to  be  ascribed  to 
new  things,  regardless  of  whether  old  and  different  things 
were  successful  or  unsuccessful,  abandoned  or  not  aban- 
doned. Novelty  is  to  be  denied  to  old  things,  regardless  of 
the  accidents  which  caused  earlier  specimens  of  the  same 
things  to  fail  to  operate,  or  caused  their  use  to  be  discon- 
tinued. 

§  64.  The  question  of  the  novelty  of  a  design,  is  to  be  de- 
termined by  the  comparative  appearance  of  that  design  and 
of  prior  designs,  in  the  eyes  of  average  observers,  and  not 
by  their  comparative  appearance  in  the  eyes  of  experts 
making  an  analytical  inspection.1  Nor  is  the  novelty  of  any 
design  negatived  by  the  fact  that  all  of  its  features  can  be 
collected  out  of  scattered  prior  designs.2 

§  65.  Novelty  is  not  negatived  by  anything  fundamentally 
incapable  of  the  function  of  the  thing  covered  by  the  patent, 
even  though  the  character  of  the  prior  thing  was  chemically 
identical  with  the  patented  thing,  or  mechanically  similar 
thereto. 

In  Morey  v.  Lockwood3  the  prior  Mau  syringe  was  relied 
upon  to  negative  the  novelty  of  the  syringe  of  Dr.  Davidson 
and  his  brother.  The  latter  is  the  now  well-known  soft 
rubber  bulb  apparatus.  The  former  was  exactly  like  it, 
except  that  the  central  part  was  a  soft  rubber  cylinder  with 
metallic  heads,  instead  of  a  soft  rubber  bulb.  The  mode  of 
operation  of  the  two  syringes  was  identical.  The  Mau  ap- 
paratus proved  to  be  of  no  practical  value,  simply  because 
the  metallic  heads  of  the  cylinder  strongly  counteracted  the 


1  Perry  v.   Starrett,  3  Bann.    &  2  Simpson  v.  Davis,  12  Fed.  Rep. 

Ard.  489,  1878;  Foster  v.  Crossin,  144,  1882;  Stearns  ®.  Beard,  46  Fed. 

23  Fed.  Rep.  402.   1885 ;  Kraus  v.  Rep.  193,  1891  ;  New  York  Belting 

Fitzpatrick,  34  Fed.  Rep.  39,  1888 ;  Co.  v.  New  Jersey  Car  Spring  Co. 

Redway  v.  Ohio  Stove  Co.  38  Fed.  48  Fed.  Rep.  557,  1891. 

Rep.  583,  1889 ;  Paine  v.  Snowden,  3  Morey  v.  Lockwood,  8  "Wallace, 

46  Fed.  Rep.  189,  1891 ;  Anderson  j>30,  1868*. 
v.  Saint,  46  Fed.  Rep.  763,  1891. 


CHAP.  III.]  NOVELTY.  61 

user's  efforts  to  compress  its  rubber  walls.  Feeble  persons 
could  not  use  it,  and  those  who  had  enough  muscular  power 
did  not  care  to  perform  the  needed  labor.  Practically, 
therefore,  the  Mau  syringe  proved  to  be  of  no  value,  and 
very  few  were  ever  sold.  For  these  reasons  the  Supreme 
Court  held  that  it  did  not  negative  the  novelty  of  the 
Davidson  patent. 

The  Wood  Finishing  Co.  v.  Hooper1  is  a  case  the  patent 
involved  in  which,  covered  the  employment  of  finely  pow- 
dered flint,  quartz,  or  feldspar,  mixed  with  oil  or  other 
fluent  substance,  for  the  purpose  of  filling  the  pores  of  the 
surface  of  wood.  A  prior  patent  had  been  granted  for  the 
employment  of  silicious  marl  or  infusorial  earth  for  the 
same  purpose.  It  was  shown  that  all  five  of  these  sub- 
stances consisted  mainly  of  silica  or  the  oxide  of  silicon, 
but  that  the  first  three  differed  from  the  last  two  in  being 
non-absorbent  instead  of  porous,  and  in  consisting  of 
angular  instead  of  rounded  particles.  These  two  differences 
made  the  first  three  substances  very  valuable  for  wood- 
filling,  whereas  the  others  were  not  valuable  for  that 
purpose.  Judge  NATHANIEL  SHIPMAN,  therefore,  decided 
that  the  prior  patent  did  not  negative  the  novelty  of  the 
later  one. 

§  66.  Novelty  is  not  negatived  by  the  fact  that  every  part 
of  the  patented  thing  is  old.2  This  rule  necessarily  follows 
from  the  doctrine  which  allows  patents  for  new  combina- 
tions of  old  devices.  In  such  cases  the  whole  is.  different 
from  the  sum  of  all  its  parts,  precisely  as  this  printed  page 
is  different  from  what  it  would  be,  if  the  same  words  were 
arranged  in  alphabetical  order,  or  were  printed  promiscu- 
ously upon  the  paper.  If,  however,  a  new  assemblage  of 
old  things  amounts  only  to  aggregation  and  not  to  combina- 


1  Bridgeport  Wood  Finishing  Co.  1880;  Cantrell  v.  Wallick,  117  U.  8. 
«.  Hooper,  5  Fed.  Rep.  63,  1880.  694,  1885;  Johnson  v.  Railroad  Co. 

2  Bates  v.  Coe,  98  U.  S.  48,  1878 ;  33  Fed.   Rep.   501,    1888;  Consoli- 
Imhaeuser  t>.  Buerk,  101  U.  S.  660,  dated  Roller  Mill  Co.  v.  Coombs, 
1879;  Parks  v.  Booth,  102  C.  S.  104,  39  Fed.  Rep.  32,  1889. 


62  NOVELTY.  [CHAP.  III. 

tion,1  or  if  it  results  in  no  new  mode  of  operation,2  the  patent 
which  covers  it  will  be  void  for  want  of  invention,  though 
not  void  for  want  of  novelty. 

§  67.  Novelty  is  not  negatived  by  any  prior  accidental 
production  of  the  same  thing,  unaccompanied  by  knowledge 
on  the  part  of  the  producer  sufficient  to  enable  him  to  re- 
peat that  production.3  The  reason  of  this  rule  arises  out 
of  that  point  of  patent  law  policy,  which  rewards  persons 
for  teaching  the  public  how  to  perform  processes  and  con- 
struct things  which  nobody  else  in  the  United  States  knew 
how  to  perform  or  to  construct,  and  relevant  to  which  no 
adequate  information  could  be  found  in  any  public  patent 
or  printed  publication  anywhere  in  the  world.  But  novelty 
is  negatived  by  proof  of  prior  use,  where  that  use  was 
understood  in  point  of  method,  though  not  correctly  under- 
stood in  point  of  result.4 

§  68.  Novelty  is  not  negatived  by  anything  which  was 
neither  designed,  nor  apparently  adapted,  nor  actually  used, 
to  perform  the  function  of  the  thing  covered  by  the  patent, 
though  it  might  have  been  made  to  perform  that  function 
by  means  not  substantially  different  from  that  of  the  pat- 
ented invention  ;5  but  this  rule  cannot  govern  any  case  which 
lacks  either  of  the  circumstances  upon  which  it  is  founded, 


1  Adams  v.  Stamping  Co.  141  U.  ing  Co.  40  Fed.  Rep.  156,  1889. 

S.   542,  1891;  Campbell  «.  Bailey,  5  Topliff  v.  Topliff,  145  U.  S.  161, 

45  Fed.  Rep.  565,  1891.  1892;    Heaton-Peninsular    Button- 

2  Burt  v.  Evory,   133  U.  S.  349,  Fastener  Co.  v.  Eliott  Button-Fast- 
1890;   Florsheim  v.   Schilling,   137  ener  Co.  58  Fed.   Rep.   222,  1892; 
U.  S.  77,  1890.  Westinghouse  «.  Brake  Co.  59  Fed. 

3  Tilghman  v.   Proctor,  102  U.  S.  Rep.  590,  1893;  Beach  «.  Box   Ma- 
711.1880;  Ransom®.  New  York,  1  chine  Co.  63  Fed.  Rep.    601,   1894; 
Fisher.  256, 1856;  Pelton «.  Waters,  Campbell    Printing    Press    Co.    «. 
1  Bann.  &  Ard.  399,  1874;  Andrews  Marden,  64  Fed.   Rep.   784,    1894; 
v.  Carman,    2  Bann.   &  Ard.  277,  New  Departure  Bell  Co.  v.  Mfg.  Co. 
1876;  Pittsburgh  Reduction  Co.  ®.  64  Fed.   Rep.  863,   1894;  Knicker- 
Cowles  Electric  Co.  55  Fed.  Rep.  bocker  Co.  v.  Rogers,  61   Fed.  Rep. 
307,  1893;  Chase  v.  Fillebrown,  58  297,  1894;  Clinton  Wire  Cloth  Co. 
Fed.  Rep.  377,  1893.  v.  Wire  Cloth  Co.  65  Fed.  Rep.  427, 

4  Dorlon  v  Guie,  25  Fed.  Rep.  816,  1894. 
1885;  Schultz  Belting  Co.   v.  Belt- 


CHAP.  Ill]  NOVELTY.  63 

for  negation  of  novelty  is  not  averted  by  the  mere  fact  that 
the  inventor  of  the  prior  device  did  not  design  it  to  perform 
the  function  of  the  patented  device,1  nor  by  the  niere  fact 
that  its  ability  to  perform  that  function  is  not  apparent  to 
every  beholder,  nor  by  the  mere  fact  that  it  was  never  ac- 
tually used  for  that  purpose,  nor  by  any  two  of  these  facts 
combined. 

§  69.  Novelty  is  not  negatived  by  anything  which  was 
invented,  patented,  or  described  in  a  printed  publication 
prior  to  the  granting  of  the  patent  sought  to  be  anticipated,        , 
or  even  prior  to  the  application  therefor,  unless  the  antici-       , 
pating  event  occurred  prior  to_  the  date  of  the  invention 
secured  by  that  patent.2 

One  apparent  exception  to  this  rule  has  been  stated  in 
one  leading  case  by  the  Supreme  Court,3  and  indorsed  in 
another  good  precedent  by  Judge  McKiNNON.4  In  those  in- 
stances it  was  said  that  where  two  patents  for  the  same 
invention  are  granted  to  the  same  inventor,  the  last,  and 
not  the  first,  is  void,  even  where  the  last  was  first  applied 
for.  The  exception  is,  however,  only  apparent,  because  the 
patent  last  applied  for  is  as  much  entitled  to  date  from  the 
making  of  -  the  invention  as  the  other.  The  date  of  inven- 
tion assignable  to  the  two  patents  being  exactly  the  same, 
the  first  patent  will  negative  the  novelty  of  the  last,  regard- 
less of  which  was  first  applied  for.  The  saying  of  the  Su- 
preme Court  in  this  matter  is  not  inconsistent  with  the  rule 
that,  in  the  absence  of  other  evidence  of  the  dates  of  inven- 
tion, the  first  application  must  be  taken  to  represent  the 
first  invention,5  because  the  fact  of  an  identical  inventor  is 
evidence  in  such  cases  that  the  date  of  invention  was  iden- 


1  Leonard  D.  Lovell,  29  Fed.  Rep.  1893. 

315,  1886.  3  Suffolk  Co.  «.  Hayden,  3  Wai- 

2  Cochrane  v.  Deener,  94  U.  S.  791.  lace,  315,  1865. 

1876;  Elizabeth  v.  Pavement  Co.  97  4  McMillin  «.   Rees,   5   Bann.  & 

U.  S.  130, 1877;    Clark  Thread  Co.  Ard.  269,  1880. 

v.  Willimantic  Linen  Co.  140  U.  8.  6  Pope  Mfg.  Co.  t>.  Gormully  Mfg. 

486,  1891;  Pacific  Cable  Ry.  Co.  t>.  Co.  144  U.  S.  244,  1892;  Pennington 

Butte  City  Ry.  Co.  58  Fed.  Rep.  422,  v.  King,  7  Fed.  Rep.  462.  1881. 


64  NOVELTY.  [CHAP.  III. 

tical.  No  man  can  make  one  invention  at  two  different 
times. 

And  the  saying  in  Suffolk  Co.  v.  Hayden  has  no  applica- 
bility to  a  case  where  an  inventor  takes  out  a  patent  which 
describes  and  claims  what  was  described  but  not  claimed 
in  a  prior  patent  of  his,  because  in  such  a  case  the  prior 
patent  is  not  for  the  same  invention  as  the  last.1 

Where  several  patents  are  granted  to  one  inventor  on 
different  inventions  in  the  same  art,  the  dates  of  their  ap- 
plications, instead  of  the  dates  of  the  patents  themselves, 
in  the  absence  of  evidence  of  the  dates  of  the  making  of  the 
respective  inventions,  determine  the  relative  rank  of  those 
patents  in  the  art  to  which  they  belong.2 

§  70.  In  order  to  apply  the  rule  of  the  last  section,  it  is 
necessary  to  fix  the  date  of  the  invention  covered  by  the 
patent  sought  to  be  anticipated.  In  cases  where  the  inven- 
tion may  be  exhibited  in  a  drawing  or  in  a  model,  it  will 
date  from  the  completion  of  such  a  model  or  such  a.  draw- 
ing as  is  sufficiently  plain  to  enable  those  skilled  in  the  art 
to  understand  the  invention;3  and  patented  inventions 
always  date  at  least  as  early  as  the  dates  of  the  execution 
of  the  original  applications  therefor,  provided  the  original 
applications  exhibit  the  inventions  with  the  above-men- 
tioned extent  of  sufficiency.4  In  cases  where  a  patented 
invention  was  explained  in  words,  without  the  aid  of  any 
model  or  any  drawing,  it  will  date  from  the  completion  of 
such  a  written  description  as  would  teach  others  how  to 


1  Suffolk  Co.  «.  Hayden,  3  Wall.  Works,  155  U.  S.  298,  1894;  Heath 
315,  1865;  Singer  v.  Braunsdorf,  7  v.  Hildreth,  1  McArthur*s  Patent 
Blatch.  521,  1870;  Wheeler  v.  Me-  Cases,  24,  1841;  Perry  v.  Cornell,  1 
Cormick,  11  Blatch.  334,  1873;  Gra-  McArthur's  Patent  Cases,  78,  1847; 
ham  v.  McCormick,  5  Bann.  &  Ard.  Farley  v>.  Steam  Gauge  Co.  1  Me- 
244, 1880;  McMillan  0.  Rees,  5  Bann.  Arthur's  Patent  Cases,  621,  1859; 
&  Ard.  269,  1880;   Graham  v.  Mfg.  Hubel  v.  Dick,  28  Fed.  Rep.  139, 
Co.  11  Fed.  Rep.  138,  1880.  1886. 

2  Barbed  Wire  Patent,  143  U.  8.         4  Kearney  v.  Railroad  Co.  32  Fed. 
281, 1892.  Rep.  322,  1887;  National  Machine 

3  Loom  Co.  v.  Higgins,  105  U.  S.  Co.  v.  Brown,  36  Fed.  Rep.  321, 
594,     1881;    Deering    v.    Harvester  1888. 


CHAP.  III.]  NOVELTY.  65 

make  and  use  the  invention  described.  In  cases  where  the 
inventor  makes  a  specimen  of  the  thing  invented  before  he 
makes  any  model,  or  drawing,  or  written  description  to  rep- 
resent that  thing,  the  invention  will  date  from  the  comple- 
tion of  that  specimen.  Perfection  is  not  necessary  to  such 
a  specimen  in  order  to  entitle  it  to  such  an  effect.  Sub- 
stantial completeness  is  enough.1 

No  invention  ought  to  date  from  any  day  wherein  it  had 
no  existence  or  representation  outside  of  the  mind  of  the 
inventor,  no  matter  how  clear  or  how  complete  his  mental 
conception  of  its  character  and  mode  of  operation  may  have 
been.  Mental  conceptions  are  not  useful  inventions  until 
they  are  so  embodied  that  the  world  could  use  them  after 
the  death  of  the  persons  who  conceived  them.2  To 
allow  inventions  to  take  date  from  mental  concep- 
tions, would  strongly  tempt  inventors  to  commit  perjury 
in  order  to  appear  to  anticipate  real  anticipations  of  their 
patents. 

Whether  an  oral  description  given  by  the  inventor  to 
another,  of  a  subsequently  patented  invention,  can  give  that 
invention  a  date  earlier  than  that  to  which  it  would  other- 
wise be  entitled,  depends  upon  the  nature  of  the  invention 
and  the  capacity  of  the  hearer  to  understand  it  and  remem- 
ber it.  Where  an  invention  is  abstruse  or  is  complicated, 
and  where  it  is  not  certain  that  the  hearer  understood  it 
and  has  remembered  it  well  enough  to  communicate  it  to 
the  world  in  case  of  the  inventor's  death,  the  invention 
ought  not  to  date  from  such  a  description.3  But  where  it 
is  shown  that  the  person  to  whom  such  an  oral  description 
was  given,  understood  it  completely,  and  has  remembered 
it  accurately,  a  patented  invention  may  date  back  to  that 


1  National  Cash  Register  Co.  t>.  2  Clark  Thread  Co.  t>.  Willimantic 

Store  Service  Co  60  Fed.  Rep.  603,  Linen  Co.  140  U.  S.  489,  1891. 

1894;    Coffee  v.   Guerrant,  68  Off.  8  Stephens  «.  Salisbury,  1  McAr- 

Gaz.  279,  1894.  thur's  Patent  Cases  385,  1855. 


66  NOVELTY.  [CHAP.  III. 

oral  description.1  The  reason  for  allowing  a  patented  in- 
vention to  date  back  to  an  oral  or  a  written  description,  or 
to  a  drawing  or  a  model,  as  the  case  may  be,  while  an  un- 
patented  invention,  which  is  set  up  to  negative  the  novelty 
of  a  patented  invention,  is  not  allowed  to  date  back  to 
either  of  those  things,  resides  in  the  fact  that  those  things 
are  incipient  in  their  nature,  and  in  the  principle  that  an 
invention  which  is  ultimately  developed  and  given  to  the 
world  in  a  patent,  ought  equitably  to  date  from  such  an 
incipiency,  while  the  rights  of  a  patentee  ought  not  to  be 
impaired  by  a  similar  incipiency  which  was  never  devel- 
oped into  a  patent.2 

§  71.  Novelty  is  negatived  by  prior  knowledge  and  use  in 
this  country,  by  even  a  single  person,  of  the  thing  patented.3 
This  rule  applies  even  to  cases  where  that  knowledge  and 
use  were  purposely  kept  secret  ;4  and  it  applies  no  matter 
how  limited  that  use  may  have  been.5 

In  Gayler  v.  Wilder  6  the  Supreme  Court  announced  an 
exception  to  this  rule,  but  in  a  later  case  it  intimated  a  de- 
nial, or  at  least  a  doubt,  of  the  validity  of  that  exception.7 
According  to  the  opinion  of  a  majority  of  the  court  in  the 
first  case,  a  single  instance  of  prior  knowledge  and  use  will 
not  negative  novelty,  if  that  use  had  ceased  when  the  patent 
was  granted,  and  that  knowledge  was  forgotten  until  called 
to  mind  by  the  reinvention.  Justices  McLEAN  and  DANIEL 
dissented  from  that  conclusion  ;  and  Judge  PUTNAM,  who  is 


1  Philadelphia  &  Trenton  R.  R.  ®.  3  Coffin  ».   Ogden,    18  Wallace, 
Stimpson,    14    Peters,    448,    1840;  120,  1873;  Brush  v.  Condit,  132  U 
Stephens  ®.  Salisbury,  1  McArthur's  S.  39,  1889. 

Patent    Cases,  385,   1855;    Hill    v.  *  Reed   ».  Cutter,  1    Story,  598, 

Dunklee,     1    McArthur's     Patent  1841. 

Cases, 483, 1857;  Davidsons  Lewis,  5  Bedford  v.  Hunt,  1  Mason,  301. 

1   McArthur's    Patent  Cases,  599,  1817;  Rich  v.  Lippincott.  2  Fisher, 

1858;   McCormick   Machine  Co.  v.  2,  1853. 

Harvester    Works,   42    Fed.   Rep.  6  Gayler  <D.  Wilder,   10  Howard, 

153,  1890;    Merrow  v.  Shoemaker,  477,  1850. 

59  Fed.  Rep.  122,  1893.  '  Coffin  v.  Ogden,  18  Wallace,  125, 

2  Bowers,    v.  Von    Schmidt,    63  1873. 
Fed.  Rep.  577,  1894. 


CHAP.  III.]  NOVELTY.  67 

the  only  judge  treating  of  the  point  in  recent  times,  finally 
felt  unable  to  lay  down  any  general  rule  on  the  subject.1 
For  these  reasons,  it  is  apparent  that  the  question  whether 
a  United  States  patent  can  be  invalidated  by  proof  that  its 
subject  is  identical  with  some  lost  art,  or  forgotten  thing, 
which  was  formerly  known  in  the  United  States,  is  yet  an 
unsettled  question. 

§  72.  Novelty  is  also  negatived  by  evidence  that  even  one 
specimen  of  the  thing  patented  was  made  in  this  country 
prior  to  its  invention  by  the  patentee,  even  .though  it  was 
not  used  prior  to  that  time.2  This  rule  results  from  the 
statute  which  provides  that  things,  in  order  to  be  -patent- 
able,  must  not  have  been  known  or  used  by  others  in  this 
country.3  If  the  prior  article  produced  or  proved,  appears 
on  inspection  to  have  been  identical  with  the  patented 
thing,  and  if  it  is  proved  to  have  been  made  in  this  country 
before  the  date  of  the  patented  invention,  it  follows  that  it 
was  known  here  prior  to  that  time,  and  the  novelty  of  the 
patent  is  necessarily  negatived.  If,  however,  the  identity 
of  the  patented  and  the  prior  article  can  be  known  only  by 
actual  use,  and  if  the  prior  article  never  was  actually  used 
till  after  the  date  of  the  patented  invention,  then  its  prior 
making  will  not  negative  novelty.4  In  that  case  though  its 
existence  was  known  prior  to  the  invention  of  the  patented 
thing,  it  was  not  known  to  be  what  the  patented  thing  after- 
ward was.  Knowledge  in  order  to  negative  novelty  must 
include  knowledge  of  the  character,  as  well  as  knowledge 
of  the  existence,  of  the  prior  thing. 

§  73.  Negation  of  novelty  is  not  averted  by  the  fact  that 
the  inventor  had  no  knowledge  of  the  anticipating  matter 


1  Converse  v.  Matthews,  58  Fed.  2  Fisher,  15,  1855;  Stitt  v.  Railroad 
Rep.  249,  1893;  Dalby  v.  Lynes,  64,  Co.  22  Fed.  Rep.  650,  1884. 

Fed.  Rep. -379,  1894.  3  Revised  Statutes,  Section  4386. 

2  Corn-planter  Patent,  23  Wallace,  4  Sayles  v.  Railway  Co.  4  Fisher, 
220,    1874;   Parker  v.   Ferguson,    1  588,  1871;  Stitt  v.  Railroad  Co.  22 
Blatch.  408,  1849;  Pitts  «.  Wemple.  Fed.  Rep.  650,  1884. 


68  NOVELTY.  [CHAP.  in. 

when  he  made  the  invention  covered  by  the  patent.1  The 
patent  laws  do  not  reward  people  for  producing  things 
which,  though  new  to  them,  are  old  to  others  in  this  coun- 
try. 

§  74.  Nor  is  negation  of  novelty  averted  by  the  fact  that 
the  anticipating  substance  was  made  by  a  different  process, 
or  derived  from  a  different  source  from  that  which  pro- 
duced the  patented  substance,  for  it  does  not  make  an  old 
thing  new  to  derive  it  from  a  new  and  unexpected  quarter2 
or  to  make  it  by  a  new  and  improved  method.3 

§  75.  Questions  of  novelty  are  questions  of  fact.4  This 
point  is  very  obvious,  except  in  cases  where  the  prior  thing 
is  a  patent  or  printed  publication.  In  those  cases  it  may 
be  supposed  that  questions  of  novelty  are  questions  of  law 
arising  on  the  construction  of  documents.  The  point  has, 
however,  been  settled  by  the  Supreme  Court,  in  a  case  in- 
volving the  consideration  of  a  prior  patent,  and  bearing 
with  equal  logical  force  upon  a  prior  printed  publication.5 
In  that  case  it  was  held  that  the  question  whether  the 
novelty  of  a  patent  is  negatived  by  a  prior  patent,  depends 
not  upon  the  construction  of  the  latter,  but  depends  rather 
upon  the  outward  embodiment  of  the  terms  contained  in 
the  latter  document ;  and  that  such  outward  embodiment 
is  to  be  properly  sought,  like  the  explanation  of  latent 
ambiguities  arising  from  the  description  of  external  things, 
by  evidence  in  pais.  The  court  accordingly  indorsed  the 
proposition  that  such  questions  belong  to  the  province  of 
evidence,  and  not  to  that  of  construction ;  and  said  that 
even  where  no  testimony  is  required  to  explain  the  terms 
of  art  or  the  description  contained  in  the  respective  docu- 
ments, the  question  is  still  to  be  treated  as  a  question  of  fact. 

1  Derby  v.  Thomson,  146  U.  S.          3  Cottier. Krementz,  31  Fed.  Rep. 
481,  1892;  Many  v.  Sizer,  1  Fisher,      43,  1887. 

19,1849.  4Battin®.  Taggert,  17  Howard, 

2  Cochrane  «..  Badische  Anilin  &      74,  1854;  Turrill  v.  Railroad  Co.  1 
Soda  Fabrik,  111   U.  S.  811,  1883;      Wallace,  491,  1863. 

Badische  Anilin  &  Soda  Fabrik  v.  &  Bischoff  v.  Withered,  9  Wallace. 
Cummins,  4  Bann.  &  Ard.  490,  1879.  812,  1869. 


CHAP.  III.] 


NOVELTY. 


69 


§  76.  The  burden  of  proof  of  a  want  of  novelty  rests  upon 
him  who  avers  it,  and  every  reasonable  doubt  should  be 
resolved  against  him.1  Novelty  can  only  be  negatived  by 
proof  which  puts  the  fact  beyond  a  reasonable  doubt.2  But 
such  proof  can  be  made  with  less  evidence,  where  anticipa- 
tion is  probable,  than  where  it  is  less  to  be  expected.3  And 
testimony  of  want  of  novelty  is  not  overthrown,  by  innocent 
errors  on  collateral  points  ;4  or  even  by  impeaching  a  prin- 
cipal witness,  if  his  testimony  is  shown  to  be  true  by  other 
evidence,  which  his  bad  character  could  not  vitiate.5  The 
unsupported  oral  testimony  of  one  witness  is  not  strong 
enough  to  negative  the  novelty  of  a  patent  beyond  a  reason- 
able doubt  ;6  and  the  oral  testimony  of  many  witnesses,  if 
unsupported  by  any  evidence  consisting  of  documents  or 
things,  must  be  very  reasonable  and  very  strong,  in  order  to 


1  Coffin  v.    Ogden,    18    Wallace, 
120,  1873;  Cantrell  t>.  Wallick,    117 
U.  8.  696,  1885;  Parham  v.  Machine 
Co.  4  Fisher,  482,   1871;  Webster 
Loom  Co.   v.    Higgins,  4  Bann.  & 
Ard.  88, 1879;  Shirley  v.  Sanderson, 
8  Fed.   Rep.   908,   1881;  Green    v. 
French,   11   Fed.   Rep.   591,   1882; 
Duffy  v.   Reynolds,   24  Fed.  Rep. 
858,  1885;  Dreyfus  v.  Schneider,  25 
Fed.   Rep.  481,   1885;    Osborne  v. 
Glazier.   31  Fed.   Rep.   404,    1887; 
Smith  v.  Davis,  34  Fed.  Rep.  785, 
1888;  Howard  v.  Plow  Works,  35 
Fed.  Rep.  745,  1888;  Pacific  Cable 
Ry.  Co.  v.  Butte  City  Ry.   Co.  55 
Fed.  Rep.  764, 1893. 

2  Barbed  Wire  Patent.  143  U.  S. 
284,    1892;  Wood   v.    Mill    Co.    4 
Fisher,  560,  1871;  Hawes  v.  Antis- 
del,  2  Bann.  &  Ard.  10,  1875;  Big- 
nail  v.  Harvey,  5  Bann.  &  Ard.  636, 
1880;  Worswick  Mfg.  Co. «.  Buffalo, 
20  Fed.  Rep.  126,  1884;  Thayer  t>. 
Hart,  20  Fed.  Rep.  694,  1884;  Ever- 
est v.  Oil  Co.  20   Fed.    Rep.   849, 


1884;  American  Bell  Telephone  Co. 
v.  People's  Telephone  Co.  22  Fed. 
Rep.  313,  1884;  McDonald  v.  Whit- 
ney, 24  Fed.  Rep.  600,  1885;  Jen- 
nings v.  Kibbe.  24  Fed.  Rep.  698, 
1885;  Wetherell  v.  Keith,  27  Fed. 
Rep.  364,  1886;  Hobble  «.  Smith, 
27  Fed.  Rep.  659,  1886;  Cohansey 
Mfg.  Co.  ».  Wharton,  28  Fed.  Rep. 
191,1886;  American  Bell  Telephone 
Co.  v.  Globe  Telephone  Co.  31  Fed. 
Rep.  733,  1887;  Hunt  Bros.  Pack- 
ing Co.  v.  Cassidy,  53  Fed.  Rep. 
260,  1893. 

3  Leefl.  Upson  &  Hart  Co.  43  Fed. 
Rep.  670,  1890;    Rochester  Coach 
Lace  Co.  v.  Schaefer,  46  Fed.  Rep. 
190, 1891. 

4  Simmonds  v.  Morrison,  44  Fed. 
Rep.  762,  1891. 

5  Oliu  «.  Timken,  155  U.  S.   152. 
1894;  Timken  v.  Olin,  37  Fed.  Rep. 
207, 1888. 

8  Bowman  v.   DeGraw,  60   Fed. 
Rep.  911,  1894. 


70  NOVELTY.  [CHAP.  III. 

negative  novelty  ;a  and  patents  are  seldom  overthrown  on 
the  mere  recollection  of  witnesses.2  This  rule  of  reasonable 
doubt  applies  where  the  question  of  novelty  depends  upon  • 
the  identity  of  the  patented  thing  or  process  with  the  alleged 
anticipation ;  as  well  as  where  that  question  depends  upon 
the  existence  or  the  priority  of  the  latter.3 

Where  an  anticipating  fact  prior  to  the  date  of  a  patent 
is  proved  beyond  reasonable  doubt,  the  burden  is  shifted  to 
the  plaintiff  to  prove,  by  convincing  preponderance  of  evi- 
dence, that  his  invention  was  made  still  earlier  than  that 
fact  occurred ;  and  if  the  plaintiff  does  not  introduce  enough 
evidence  to  strongly  outweigh  whatever  evidence  is  intro- 
duced to  the  contrary,  the  patent  must  be  held  to  be  void  for 
want  of  novelty.4 


1  Barbed  Wire  Patent,  143  U.  S.          2  Carter  v.  Wollschlaeger,  53  Fed. 

284,    1892;    Deering    v.    Harvester  Rep.  575,  1892. 
Works,  155  U.  S.  300,  1894;  Amer-          3  Pittsburgh  Reduction  Co.  e.  Al- 

ican  Roll  Paper  Co.  «.  Weston,  59  uminum  Co.  55  Fed.  Rep.  308,  1892. 
Fed.  Rep.  150, 1893;  Knickerbocker          4  ciark  Thread  Co.  •».  Williman- 

Co.  «.  Rogers,  61  Fed.  Rep.  297,  tic  Linen  Co.  140  U.  S.  492,  1891; 

1894;  Pratt  t>.  Sencenbaugh,  64  Fed.  Caverly  «.  Deere,  52  Fed.  Rep.  760, 

Rep.  781,  1893;  Campbell  Printing  1892.      Curtis    c>    Atlanta     Street 

Press  Co.  e.  Harden,  64  Fed.  Rep.  Railway    Co.   56  Fed.    Rep.    600, 

785,  1894;  Wickes  t>.  Lockwood,  65  i892;  Simmons  «.  Standard  Oil  Co. 

Fed.  Rep.  611,   1895;  Singer    Mfg  62  Fed  Rep.  930, 1894;  Ecaubert «. 

Co.  t».  Schenck,  68  Fed.  Rep.  194,  Appleton.  67  Fed.  Rep.  925,  1895. 
1895. 


CHAPTEE  IV. 

UTILITY.       • 


77.  Utility  necessary  to  patentabil- 
ity. 

78.  Utility  is  negatived  by  lack  of 
function. 

79.  Perfection  not  necessary  to  util- 
ity. 

80.  Beauty  has  utility. 

81.  Utility  is  negatived  where  func- 
tion is  evil. 


82.  Functions    which      sometimes 

work  evil,  and  sometimes  work 

good. 
8.3.  Functions  thought  by  some  to 

be  good,  and  by  others  to  be 

bad. 

84.  Good  functions  in  wrong  places. 

85.  Doubts  relevant  to  utility  to  be 
solved  against  infringers. 


§  77.  THE  useful  arts  are  those  that  Congress  is  author- 
ized by  the  Constitution  to  promote,  and  accordingly  the 
statute  includes  utility  among  the  qualities  which  a  process 
or  a  thing  must  have  in  order  to  be  patentable.1  To  possess 
utility,  a  thing  or  a  process  must  be  capable  of  producing 
a  result,  and  that  result  must  be  a  good  result.  Both 
these  elements  inhere  in  the  meaning  of  the  word  ;  and  they 
are  so  distinct  as  to  require  separate  explanation. 

§  78.  Utility  is  absent  from  all  processes  and  devices 
which  cannot  be  used  to  perform  their  specified  functions, 
and  patents  for  such  subjects  are  therefore  void.2  This 
rule  applies  even  to  cases  in  which,  by  simply  adding  new 
elements  to  useless  contrivances,  highly  useful  inventions 
are  produced. 

In  Burrall  v.  Jewett,3  the  patent  covered  the  cylinder  of  a 
threshing-machine,  having  rows  of  teeth  inserted  in  its  con- 
vex surface  and  revolving  within  a  barrel  which  had  no 
teeth.  The  contrivance  was  confessedly  useless.  After  the 


1  Revised  Statutes,  Section  4886. 

2  Coupe  v.  Royer,  155  U.  S.  574, 
1895;  Bliss  v.  Brooklyn,  10  Blatch. 
522, 1873;  Rowe  v.   Blanchard,   18 


Wisconsin,  465,  1864. 

3  Burrall  v.  Jewett,  2  Paige,  143, 
1830. 


71 


72  UTILITY.  [CHAP.  iv. 

patent  for  it  was  granted,  the  patentee,  or  some  other  per- 
son, by  simply  inserting  rows  of  teeth  in  the  concave  sur- 
face of  the  barrel,  produced  the  successful  threshing- 
machine,  which  has  everywhere  succeeded  the  ancient 
flail.  The  law  applicable  to  these  facts  was  stated  by 
Chancellor  WALWOKTH  in  the  following  terms  :  "  The  patent 
is  void  if  the  machine  will  not  answer  the  purpose  for  which 
it  was  intended,  without  some  addition,  adjustment,  or  al- 
teration, which  the  mechanic  who  is  to  construct  it  must 
introduce  of  his  own  invention,  and  which  had  not  been  in- 
vented or  discovered  by  the  patentee  at  the  time  his  patent 
was  issued." 

In  Bliss  v.  Brooklyn  the  patent  covered  a  certain  hose- 
coupling.  The  contrivance  was  worthless,  because  it  proved 
on  trial  to  be  inoperative.  The  subsequent  addition  of  a 
lug  to  one  of  its  parts,  transferred  the  coupling  into  a  use- 
ful invention.  Judge  BENEDICT  nevertheless  held  the  patent 
to  be  invalid  for  want  of  utility. 

§  79.  If,  however,  a  device  performs  a  good  function, 
though  but  imperfectly,  the  utility  of  that  device  is  not 
negatived  by  the  fact  that  it  is  susceptible  of  improvement, 
which  will  make  it  operate  much  better,1  nor  by  the  fact 
that  some  prior  invention  performed  the  same  function 
quite  as  well,2  or  even  performed  it  with  superior  excel- 
lence.3 Nor  is  utility  negatived  by  later  inventions  which 
are  so  much  superior  to  the  patented  process  or  thing,  that 
they  entirely  superseded  the  use  of  the  latter.4  Indeed, 
patents  are  never  held  to  be  void  for  want  of  utility,  merely 
because  the  things  covered  by  them  perform  their  functions 
but  poorly.5  In  such  cases  no  harm  results  to  the  public 

1  Wheeler  «.  Reaper  Co.  10  Blatch.      1858. 

189,    1872;     Mergenthaler     Co.    v.  *  Railway  Co.  v.  Sayles,  97  U.  S. 

Press  Pub.  Co.  57  Fed.   Rep.   505,  559,  1878;    Poppenhusen  v.   Comb 

1893.  Co.  2  Fisher,  72,  1858;  McComb  «. 

2  Seymour  •».  Osborne.ll  Wallace,  Ernest,  1  Woods,  203,  1871. 

516,  1870:  Shaw  v.  Lead  Co.  11  5  Vance  v.  Campbell,  1  Fisher, 
Fed.  Rep.  715,  1882.  485,  1859;  Conover  t>.  Roach,  4 

3  Bell  v.  Daniels,  1  Fisher,   375,      Fisher,  16,  1857. 


CHAP.  IV.]  UTILITY.  73 

from  the  exclusive  right,  because  few  will  use  the  invention, 
and  because  those  who  do  use  it  without  permission,  will 
seldom  or  never  be  obliged  to  pay  for  that  use,  anything 
beyond  the  small  benefit  they  may  really  have  realized 
therefrom.1 

§  80  Utility  is  not  negatived  by  the  fact  that  the  manu- 
facture covered  by  the  patent  has  no  function  except  to 
decorate  the  object  to  which  it  is  designed  to  be  attached.2 
In  such  case  utility  resides  in  beauty.  Whatever  is  beau- 
tiful is  useful,  because  beauty  gives  pleasure,  and  pleasure 
is  a  kind  of  happiness,  and  happiness  is  the  ultimate  object 
of  the  use  of  all  things. 

§  81."  Utility  is  negatived  if  the  function  performed  by  an 
invention  is  injurious  to  the  morals,  the  health,  or  the  good 
order  of  society.3  An  invention  to  improve  the  art  of 
forgery,  or  one  to  facilitate  the  spread  of  a  contagious  dis- 
ease, or  one  to  render  air  or  water  intoxicating,  would  of 
course  be  unpatentable  for  want  of  utility.  The  more  com- 
pletely such  an  invention  could  perform  its  function,  the 
more  objectionable  it  would  be  in  this  respect.  But  utility 
is  not  negatived  by  the  fact  that  the  article  covered  by  a 
patent  is  an  imitation  of  a  natural  substance.4 

§  82.  An  important  question  relevant  to  utility  in  this  as- 
pect, may  hereafter  arise  and  call  for  judicial  decision.  It 
is  perhaps  true,  for  example,  that  the  invention  of  Colt's 
revolver  was  injurious  to  the  morals,  and  injurious  to  the 
health,  and  injurious  to  the  good  order  of  society.  That 
instrument  of  death  may  have  been  injurious  to  morals,  in 
tending  to  tempt  and  to  promote  the  gratification  of  private 
revenge.  It  may  have  been  injurious  to  health,  in  that  it  is 
very  liable  to  accidental  discharge,  and  to  thereby  cause 
wounds,  and  even  homicide.  It  may  also  have  been 


1  Gibbs  v.  Hoefner,  19  Fed.  Rep.  1817;  National  Device  Co.  v.  Lloyd, 
324,  1884.  40  Fed.  Rep.  89, 1889. 

2  Magic  Ruffle  Co.  v.  Douglas,  2  4  In  re  Corbin  and  Martlett,  1  Mc- 
Fisher,  330.  1863.  Arthur's  Patent  Cases,  521,  1857. 

3  Bedford  v.  Hunt,  1  Mason,  301, 


74  UTILITY.  [CHAP.  IV.- 

injurious  to  good  order,  especially  in  the  newer  parts  of  the 
country,  because  it  facilitates  and  increases  private  war- 
fare among  frontiersmen.  On  the  other  hand,  the  revolver, 
by  furnishing  a  ready  means  of  self-defense,  may  sometimes 
have  prompted  morals  and  health  and  good  order.  By  what 
test,  therefore,  is  utility  to  be  determined  in  such  cases  ? 
Is  it  to  be  done  by  balancing  the  good  functions  with  the 
evil  functions  ?  Or  is  everything  useful  within  the  meaning 
of  the  law,  if  it  is  used  to  accomplish  a  good  result, 
though  in  fact  it  is  oftener  used  to  accomplish  a  bad  one  ? 
Or  is  utility  negatived  by  the  mere  fact  that  the  thing  in 
question  is  sometimes  injurious  to  morals,  or  to  health,  or  to 
good  order  ?  The  third  hypothesis  cannot  stand,  because 
if  it  could,  it  would  be  fatal  to  patents  for  steam-engines, 
dynamos,  electric  railroads,  and  indeed  many  of  the  noblest 
inventions  of  the  nineteenth  century.  The  first  hypothesis 
cannot  stand,  because  if  it  could  it  would  make  the  validity 
of  the  patents  to  depend  on  a  question  of  fact,  to  which  it 
would  often  be  impossible  to  give  a  reliable  answer.  The 
second  hypothesis  is  the  only  one  which  is  consistent  with 
the  reason  of  the  case,  and  with  the  practical  construction 
which  the  courts  have  given  to  the  statutory  requirement  of 
utility. 

'§  83.  Another  question  relevant  to  utilty  of  function  will 
sooner  or  later  demand  the  attention  of  counsel  and  of 
courts.  A  particular  invention  may  invariably  perform  one 
specific  function,  which  function  is  deemed  good  in  some 
quarters,  and  in  other  quarters  is  thought  to  be  bad.  The 
function  performed  by  a  newly  invented  smoking-pipe,  if  it 
increased  the  prevalence  of  smoking,  would  be  thought  by 
many  persons  to  be  only  evil,  and  that  continually  :  would 
be  deemed  by  many  moralists  to  be  injurious  to  the  morals, 
and  by  many  physicians  to  be  injurious  to  the  health  of 
society.  James  I.  would  doubtless  have  refused  a  patent 
for  such  an  invention,  unless  by  granting  one  he  could  have 
diminished  its  use.  On  the  other  hand,  there  are  many 
persons  who  would  regard  such  an  invention  as  truly  use- 
ful. Federal  judges  would  be  found  among  both  parties, 


CHAP.  IV.]  UTILITY.  75 

and  an  entire  difference  of  personal  opinion  on  the  point 
might  perhaps  exist  among  the  justices  of  the  Supreme 
Court  themselves.  Personal  opinion  cannot,  therefore,  con- 
trol the  decision  of  such  a  question,  for  if  it  could  there 
would  be  no  stability  to  the  jurisprudence  of  the  subject. 
Nor  ought  former  custom  to  be  the  criterion,  for  if  it  were, 
each  age  would  be  hampered  by  a  prior  and  lower  civiliza- 
tion. Science  may  hereafter  demonstrate  the  uniform  hurt- 
fulness  of  smoking,  and  when  it  does,  the  courts  can  hardly 
adjudge  it  to  be  useful  on  the  ground  that  millions  of  men 
formerly  smoked.  It  seems,  therefore,  that  in  such  cases 
of  divided  personal  opinion  relevant  to  the  utility  of  a  par- 
ticular result,  the  only  criterion  of  decision  is  the  average 
public  sentiment  of  the  time  when  the  question  arises.1 
Accordingly,  the  courts  at  present  uphold  patents  which 
relate  to  tobacco,  and  will  probably  always  sustain  the 
utility  of  inventions  which  perform  functions  that  average 
public  sentiment  is  willing  to  have  performed. 

§  84.  Utility  is  negatived  by  the  fact  that  the  patented 
process  or  thing  is  injurious  to  the  thing  to  which  it  is  ap- 
plicable,2 and  also  by  the  fact  that  the  function  performed 
by  the  patented  part  of  a  machine,  though  good  in  itself,  is 
injurious  to  the  utility  of  the  machine  as  a  whole.3  The 
first  of  these  points  is  well  illustrated  by  the  first  case 
cited  in  this  section  :  a  case  based  on  a  patent  for  a  pro- 
cess of  treating  leather  to  an  application  of  fat  liquor.  The 
second  point  is  equally  well  illustrated  by  the  second  case  : 
a  case  based  on  a  patent  for  a  locomotive  spark  arrester. 
To  arrest  sparks  is  in  itself  a  good  thing  to  do,  but  where 
it  must  be  done  in  such  a  way  as  to  stop  or  seriously  re- 
tard the  locomotive,  it  is  not  desirable  to  attempt  it.  There- 
fore a  device  which  would  arrest  sparks,  but  only  at  the 
expense  of  retarding  the  locomotive  from  the  smoke-pipe 
of  which  they  issued,  was  rightly  held  to  be  wanting  in 
utility. 

1  Pope  Mfg.  Co.  v.  Gormully,  144      433,  1873. 

U.  S.  233,  1892.  a  Wilton  v.  Railroad  Co.  1  Bright- 

a  Klein  v.  Russell,    19  Wallace,      ley's  Federal  Digest,  618,  1849. 


UTILITY. 


[CHAP.  iv. 


§  85  A  patent  is  prima  facie  evidence  of  utility,1  and 
doubts  relevant  to  the  question  should  be  resolved  against 
infringers,2  because  it  is  improbable  that  men  will  render 
themselves  liable  to  actions  for  infringement,  unless  in- 
fringement is  useful.3 


1  Vance  •».  Campbell,    1    Fisher, 
483,  1859. 

2  Western  Electric  Co.  v.  LaRue, 
139  U.    S.    608,  1891;    Whitney    v. 
Mowry,  4  Fisher,  215,  1870. 


3  Lehnbeuter  v.  Holthaus,  105  U. 
S.  94,  1881;  Gandy  v.  Belting  Co. 
143  U.  S.  595,  1892;  La  Rue  «. 
Electric  Co.  31  Fed.  Rep.  82,  1887. 


CHAPTER  V. 


ABANDONMENT. 


86.  The  several  sorts  of  abandon- 
ment. 

87.  Abandonment  of  inventions. 

88.  Actual  abandonment  of  inven- 
tions. 

89.  Actual  abandonment  by  express 
declaration. 

90.  Actual  abandonment  by  formal 
disclaimer. 

91.  Actual  abandonment  resulting 
from  laches  before  application. 

92.  Actual  abandonment  resulting 
from  laches  after  application 
and  before  issue  of  letters  pat- 
ent. 

93.  Constructive  abandonment  be- 
fore application. 

94.  "  Public  use,"  defined  and  de- 
lineated. 

95.  Experimental  use. 

96.  "  On  sale,"  delineated  and  de- 
fined. 

97.  Sale  of  inchoate  right  to  a  pat- 
ent. 


98.  Degree  of  identity  necessarily 
involved   between    the    thing 
constructively  abandoned  and 
the  thing  patented. 

99.  Making,  works  no  constructive 
abandonment. 

100.  Public  knowledge,  works   no 
constructive  abandonment. 

101.  Public  use  or  sale  in  a  foreign 
country. 

103.  Constructive  abandonment  af- 
ter   application,    and    before 
issue  of  letters  patent. 

104.  Rules  of  constructive  abandon- 
ment are  inflexible. 

105.  Surrender  of  letters  patent. 

106.  Abandonment  of  invention  af- 
ter letters  patent,  unknown  to 
the  law. 

107.  Acquiescence  in  unlicensed  use 
of  patented  invention. 

108.  Questions  of  abandonment  are 
questions  of  fact. 


§  86.  AN  inventor  may  abandon  an  unsuccessful  en- 
deavor to  make  an  invention  ;  or  having  made  an  invention, 
he  may  abandon  it  to  the  public ;  or  having  made  an  inven- 
tion and  having  applied  for  a  patent  thereon,  he  may 
abandon  that  application  without  abandoning  that  inven- 
tion. Transactions  of  the  first  sort  are  commonly  called 
unsuccessful  abandoned  experiments.  They  confer  no 
rights  upon  those  who  make  them,  and  they  affect  no  rights 

77 


78  ABANDONMENT.  [CHAP.  V. 

of  any  other  person.1  Transactions  of  the  third  sort  are 
treated  in  the  chapter  on  applications  ;  the  sixth  chapter  of 
this  book.  Transactions  of  the  second  sort  require  treat- 
ment in  respect  that  they  are  inventions ;  and  also  require  sep- 
arate treatment  in  respect  that  they  are  abandoned.  Treat- 
ment of  the  first  sort  takes  no  account  of  the  fact  of  abandon- 
ment, because  abandoned  inventions  have  the  same  effect  on 
the  rights  of  subsequent  inventors  that  they  would  have  if 
they  had  not  been  abandoned.2  That  subject,  therefore,  does 
not  belong  to  this  chapter.  It  is  treated  in  the  chapters  on 
invention  and  letters  patent,  where  the  state  of  the  art  is  a 
very  important  factor  in  the  discussion ;  and  also  in  the 
chapter  on  novelty,  where  anticipation  is  the  point  of  in- 
quiry. Treatment  of  the  second  sort  indicated  above  is  the 
special  function  and  scope  of  this  chapter.  Abandoned  in- 
ventions are  here  considered  with  regard  to  the  effect 
abandonment  of  them  has  upon  the  rights  of  their  invent- 
ors, and  with  regard  to  the  rules  by  means  of  which  aban- 
donment is  to  be  affirmed  or  denied  in  particular  cases. 

§  87.  Abandonment  of  an  invention  may  be  actual,  or  it 
may  be  constructive.  It  is  actual  when  it  is  the  result  of 
intention.  It  is  constructive  when  it  is  the  result  of  some 
statute  which  operates  regardless  of  the  intention  of  the 
inventor.  The  two  sorts  require  and  will  receive  sepa- 
rate treatment  in  this  chapter,  but  there  are  some  points  of 
fact  and  of  law  which  apply  equally  to  both.  Either  kind 
may  occur  before  any  application  for  a  patent  is  made,  or 
may  occur  after  such  an  application,  and  before  any  letters 
patent  are  issued.3  So  also,  either  actual  or  constructive 
abandonment  of  an  invention,  is  fatal  to  the  validity  of  any 
patent  that  may  afterward  be  granted  therefor.  The  in- 
choate right  to  a  patent  when  once  abandoned  can  never  be 

1  Deering  v.   Harvester    Works,  Ecaubert  v.  Appleton,  67  Fed.  Rep. 

155  U.  S.  302,  1894;  American  Bell  922,  1895. 

Telephone  Co.   «.    Cushman  Tele-  z  Olds  v.   Brown,  41   Fed.   Rep. 

phone  Co.  35  Fed.  Rep.  734,  1888;  703,  1890. 

Brush  Electric  Co.   v.   Ft.  Wayne  3  Rifle  &  Cartridge  Co.  ®.  Arms 

Electric  Co.  44  Fed.  Rep.  284, 1890;  Co.  118  U.  S.  24,  1885. 


CHAP.  V.]  ABANDONMENT.  79 

resumed  ;  for  where  gifts  are  once  made  to  the  public,  they 
become  absolute  and  irrevocable.1 

§  88.  Actual  abandonment  of  an  invention  occurs  when- 
ever there  is  an  entire  relinquishment  of  all  expectation  of 
securing  a  patent  therefor,  and  an  accompanying  formation 
of  an  expectation  that  the  invention  will  always  be  free  to  the 
public.2  Such  a  relinquishment  may  be  shown  by  direct, 
or  by  circumstantial  evidence.  It  may  be  proved  by  things 
said  or  things  done  by  the  inventor,  or  it  may  be  proved  by 
his  omission  or  delay  to  do  what  the  law  requires  to  be 
done  in  order  to  secure  letters  patent. 

§  89.  An  inventor  abandons  his  invention  to  the  public 
when  he  makes  an  express  declaration  to  that  effect.3  Jus- 
tice CURTIS  charged  the  jury,  in  Kendall  v.  Winsor,  that 
abandonment  might  be  shown  by  declarations  or  conduct, 
and  the  Supreme  Court  held  that  Justice  CUETIS'S  instruct- 
ion was  in  strict  conformity  with  the  true  principle.  The 
Supreme  Court  also  said  in  that  case :  "It  is  the  unques- 
tionable right  of  every  inventor,  to  confer  gratuitously  the 
benefits  of  his  ingenuity  upon  the  public,  and  this  he  may 
do  by  express  declaration." 

§  90.  So  also  an  inventor  will  be  held  to  abandon  a  par- 
ticular invention,  when  he  formally  disclaims  it  in  an  appli- 
cation for  a  patent  tor  some  other  invention  ;*  and  where 
he  cancels  from  an  application,  a  claim  for  that  invention, 
and  substitutes  no  other  claim  for  the  same  invention,  be- 
fore his  patent  is  issued  ;5  and  also  when  he  formally  dis- 
claims a  particular  invention,  or  claim  in  a  separate  paper 
filed  for  that  purpose.  The  Supreme  Court  decided  in  1854, 

1  Pennock  v.  Dialogue,  2  Peters,  3  Kendall  ».  Winsor,    21    How- 
1,  1829;  Kendall®.  Winsor,  21  How-  ard,  328,  1858;  Rifle  &  Cartridge  Co. 
ard,  328,   1858;  Consolidated  Fruit  v.  Arms  Co.  118  U.  S.  24,  1885. 
Jar  Co.  v.  Wright,  94  U.  S.  96, 1876;  4  Leggett  v,  Avery,  101  U.  S.  259, 
Planing  Machine  Co.  v.  Keith,  101  1879. 

U.  8  484, 1879;  Consolidated  Fruit  &  Yale  Lock  Co.  v.  Berkshire 
Jar  Co.  v.  Stamping  Co.  27  Fed.  Bank,  135  U.  S.  403,  1890;  Pitts- 
Rep.  377,  1886.  burgh  Reduction  Co  v.  Cowles 

2  Babcock  v.  Degner,    1    McAr-  Electric  Co.  55  Fed  Rep  320,  1893. 
thur's  Patent  Cases,  616,  1859. 


80  ABANDONMENT.  [CHAP.  V. 

that  no  abandonment  results  from  the  mere  fact  that  the 
inventor  described  the  invention  in  an  application  for  a 
patent,  without  either  claiming  or  disclaiming  the  same.1 
"When  the  cited  case  was  tried  in  the  court  below,  the  judge 
charged  the  jury  "  That  a  description,  by  the  applicant  for 
a  patent,  of  a  machine,  or  a  part  of  a  machine,  in  his  speci- 
fication, unaccompanied  by  a  notice  that  he  has  rights  in  it 
as  an  inventor,  or  that  he  desires  to  secure  title  to  it  as  a 
patentee,  is  a  dedication  of  it  to  the  public."  But  when 
the  case  reached  the  Supreme  Court,  that  instruction  was 
decided  to  be  erroneous,  and  a  new  trial  was  therefore 
awarded.  The  paramount  precedent  thus  established  has 
been  followed  by  the  Supreme  Court,  in  a  recent  case,  by 
holding  that  a  particular  combination,  which  was  described 
in  an  original  patent,  but  neither  claimed  nor  disclaimed 
therein,  was  lawfully  claimed  in  a  reissue  of  that  patent.2 
This  holding  constituted  a  decision  that  no  abandonment 
results  from  the  mere  fact  that  the  inventor  described  the 
invention  in  an  application  for  a  patent,  without  either 
claiming  or  disclaiming  the  same ;  for  the  Supreme  Court 
has  always  held  that  an  abandonment  of  a  right  to  a  patent 
on  a  particular  invention,  whenever  it  occurs,  is  absolute 
and  irrevocable.3 

§  91.  Abandonment  is  also  proved  by  evidence  that  the  in- 
ventor is  chargeable  with  laches,  relevant  to  applying  for 
a  patent.4  Long  delay  constitutes  laches,  unless  there  was 
some  reason  which  rendered  that  delay  consistent  with  an 
expectation  to  finally  secure  a  patent.  Extreme  poverty  of 
the  inventor  is  such  a  reason  ;5  but  poverty  which  was  not 

1  Battin  «.  Taggert,  17  Howard,  *  Consolidated  Fruit  Jar  Co.  t>. 
83,  1854.  Wright,  94  U.  S.  96,  1876;  Craver  ®. 

2  Topliff  0.  Topliff,  145  U.  S.  165,  Weyhrich.  81  Fed.   Rep.  607,  1887; 
1892.  Wright  0.  Postel,  44  Fed.  Rep.  352, 

3  Pennock  v.  Dialogue,  2  Peters,  1890. 

1,    1829;    Kendall    0.    Winsor,    21  «  Smith  0.  Dental  Vulcanite  Co. 

Howard,  328,   1858;     Consolidated  93  U.  S.  491,  1876;  Celluloid  Mfg. 

Fruit  Jar  Co.  0.  Wright,  94  U.  S.  Co.  0.  Crofut,  24  Fed.   Rep.  796V 

96,   1876;  Planing  Machine  Co.  0.  1885. 
Keith,  101  U.  S.  484,  1879. 


CHAP.  V.]  ABANDONMENT.  81 

sufficient  to  prevent  the  inventor  from  securing  patents  on 
other  inventions,1  or  from  spending  money  for  an  education,2 
is  not  such  a  reason.  The  fact  that  during  all,  or  during 
much  of  the  delay  the  inventor  was  within  the  rebel- 
lious Southern  Confederacy,  and  therefore  unable  to  apply 
for  a  United  States  patent,  has  also  been  repeatedly  held  to 
be  such  a  reason.3  Mental  disorder  which  was  great  enough 
to  generally  incapacitate  the  inventor  for  business  during 
the  time  of  the  delay,  is  also  such  a  fact  as  will  negative 
laches,4  and  physical  disorder  ought  under  the  same  cir- 
cumstances to  have  the  same  effect. 

Neither  can  laches  be  predicated  of  any  delay  which  was 
caused  by  the  experiments  of  the  inventor  in  making  or 
perfecting  his  invention,5  nor  of  any  delay  caused  by  ab- 
sorbing misfortune,6  nor  upon  any  neglect  of  which  his  pat- 
ent solicitor  was  'guilty.7  Nor  does  delay  constitute  laches 
when  it  was  caused  by  the  fact  that  the  invention  could 
only  be  used  in  connection  with  one  covered  by  another 
patent,  and  by  the  fact  that  the  inventor  failed  to  make  any 
arrangement  with  the  owner  of  that  patent  for  the  joint  use 
of  the  two  inventions.8  If  under  such  circumstances  the 
inventor  waits  till  the  older  patent  expires  before  securing 
his  patent,  his  delay  is  amply  accounted  for  by  his  desire 
to  enjoy  for  the  full  statutory  term  of  a  patent  the  practically 
exclusive  right  to  his  invention.  To  predicate  abandon- 
ment of  delay  suffered  for  such  a  purpose  would  be  logi- 
cally impossible. 

§  92.  Abandonment  is  also  established  by  evidence  that 
an  inventor  is  chargeable  with  laches  relevant  to  prosecut- 

1  Rifle  &  Cartridge  Co.  v.  Arms  Rep.  784,  1882. 

Co.  118  U.  S.  24,  1885;   Wickers-  5  Agawam  Co.  v.  Jordan,  7  Wai- 
ham  v.  Singer,  1  McArthur's  Patent  lace,  583, 1868. 
Cases,  6b9,  1859.  6  Beedle  «.  Bennett,  122  U.  S.  76, 

^Craver  v.   Weyhrich,   31    Fed.  1886. 

Rep.  607,  1887.  7  Birdsall  v.  McDonald,  1  Bann. 

3  Johnsen  v.  Fassman,  1  Woods,  &  Ard.   165,  1874;    Howes  v.  Mc- 
14 ',  1871;  Knoxfl.  Loweree,  1  Bann.  Neal,  3  Bann.  <fc  Ard.  876,  1878. 

A  Ard.  589,  1874.  8  Webster  «.  New  Brunswick  Car- 

4  Ballard  v.   Pittsburg,   12  Fed.      pet  Co.  1  Bann.  <fe  Ard.  84.  1874. 


82  ABANDONMENT.  [CHAP.  V. 

ing  or  renewing  his  application  after  it  has  been  rejected  or 
withdrawn.1  For  example,  where  an  application  for  a  pat- 
ent is  rejected  when  it  ought  to  be  allowed,  and  where  the 
inventor  long  acquiesces  in  that  erroneous  rejection,  sup- 
posing it  to  be  right,  he  cannot  on  receiving  better  informa- 
tion renew  his  application  or  file  another,  and  thereupon 
secure  a  valid  patent.2  In  such  a  case  the  desire  of  the  in- 
ventor to  secure  a  patent  may  never  have  left  him,  but  there 
was  doubtless  a  complete,  though  perhaps  reluctant,  relin- 
quishment  of  all  expectation  of  so  doing.  An  abandonment 
of  an  invention  is  not  less  real  because  it  was  unnecessary. 
But  Congress  by  a  special  act  may  waive  an  abandonment 
and  authorize  a  patent  to  issue  for  the  abandoned  inven- 
tion.3 And  laches  cannot  be  predicated  of  any  delay  which 
was  incurred  by  an  applicant  as  the  result  of  slowness  of 
procedure  in  his  case  in  the  Patent  Office,  whether  that 
slowness  was  due  to  neglect4  or  to  routine.5 

§  93.  Constructive  abandonment  of  inventions  prior  to 
applications  for  letters  patent  is  the  offspring  of  certain 
statutes,  the  earliest  of  which  was  the  Patent  Act  of  1836.6 
Sections  6  and  7  of  that  act  authorized  the  Commissioner 
of  Patents  to  grant  a  patent  only  where  the  alleged  inven- 
tion had  not  been  in  public  use  or  on  sale  with  the  appli- 
cant's consent  or  allowance  prior  to  the  application.  Sec- 
tion 15  provided  that  in  suits  for  infringement,  judgment 
should  be  rendered  for  the  defendant  if  he  should  have 
pleaded  and  proved  that  the  thing  patented  had  been  in 
public  use  or  on  sale  with  the  consent  or  allowance  of  the 
patentee  before  his  application  for  a  patent.  Section  7  of 


1  Planing  Machine  Co.  v.  Keith,  ~Rep.  43,  1884. 

101  U.  S.  484.  1879;   Rifle  &  Cart-  4  gayl'es  «.  Railroad  Co.  2  Fisher, 

ridge  Co.  ®.  Arms  Co.  118  U.  S.  22,  523>  1865. 

5  American  Bell  Telephone  Co.  ». 

2  Marsh  «.  Commissioner,  3  Bis-  United  StateS|  68  Fed    Rep    542( 
sell,  321,  1872;   Consolidated  Fruit  1895. 

Jar  Co.  v.  Stamping  Co.  27  Fed.  6  5  statutes  at  Large,  Ch.  357,  p. 

Rep.  377,  1886.  117 

3  Graham  v.  Johnston,  21   Fed. 


CHAP.  V.  ABANDONMENT.  83 

the  Patent  Act  of  1839  *  provided  that  no  patent  should  be 
held  to  be  invalid  by  reason  of  purchase,  sale,  or  use  of  the 
thing  covered  thereby  prior  to  the  application  for  a  patent, 
except  on  proof  of  abandonment  of  such  invention  to  the 
public,  or  on  proof  that  such  purchase,  sale,  or  use  had 
been  for  more  than  two  years  prior  to  such  application  for 
a  patent.  This  provision  of  the  Act  of  1839  was  in  one 
respect  restrictive  of  the  enactments  just  cited  from  the 
statute  of  1836,  and  in  one  respect  it  enlarged  their  opera- 
tion. Its  effect  was  to  amend  those  enactments  in  the  same 
way  that  it  would  have  done  if  it  had  inserted  the  words 
"for  more  than  two  years  "in  the  proper  place  in  their 
phraseology,  and  had  also  cancelled  the  qualification  which 
related  to  consent  and  allowance.2  This  phrase  "for  more 
than  two  years"  means  earlier  than  two  years,3  so  that  the 
law  which  the  two  statutes  established  on  the  subject  is  ex- 
pressed in  the  following  sentence.  A  patent  is  void  if  the 
invention  covered  thereby  was  in  public  use  or  on  sale 
earlier  than  two  years  before  the  application  for  that  patent. 
And  that  continued  to  be  the  law  of  the  United  States  on 
the  subject  under  the  Consolidated  Patent  Act  of  July  8, 
1870,4  and  also  under  the  Revised  Statutes.5  The  two  years 
contemplated  'by  this  law  are  ascertained  by  measuring 
backward  from  the  date  of  the  filing  of  the  application  in 
the  Patent  Office ; 6  but  where  a  second  or  renewed  applica- 
tion is  filed  to  take  the  place  of  another  which  described 
and  claimed  the  same  invention,  and  which  was  withdrawn 
or  relinquished  with  intent  to  file  the  second  application, 
the  two  years  are  ascertained  by  measuring  backward  from 
the  date  of  the  filing  of  the  first  application.7 

1  5  Statutes  at  Large,  Ch.  80,  p.  5  Revised  Statutes,  Section  4886; 
354.  Anderson  v.  Eiler,  46  Fed.   Rep. 

2  Andrews  v.  Hovey,  123   U.  S.  778,   1891;    In  re  Drawbaugh,   67 
267,  1887;  124  U.  S.  694,  1887.  Off.  Gaz.  929,  1894. 

3  Consolidated  Fruit  Jar  Co.  v.  «  Campbell  v.  New  York,  35  Fed. 
Wright,  94  U.  S.  94, 1876.  Rep.  504, 1888. 

4  16  Statutes  at  Large,  Ch.  230,  7  International  Crown  Co. v.  Rich- 
p.  198.  mond,  30  Fed.  Rep.  778,  1887. 


84  ABANDONMENT.  [CHAP.  V. 

§  94.  What  is  "  public  use,"  within  the  meaning  of  the 
statute  ?  This  question  has  now  received  light  from  a  suf- 
ficient number  of  decisions,  affirming  or  negativing  the  fact 
of  public  use  in  particular  cases,  to  make  it  possible  to  de- 
duce a  moderately  precise  answer  from  judicial  authorities. 

If  the  inventor  allows  his  invention  to  be  used  by  other 
persons  generally,  either  with  or  without  compensation, 
then  it  will  be  in  public  use  within  the  meaning  of  the  stat- 
ute.1 And  the  use  is  public  which  follows  a  transfer  of  the 
thing  used  from  its  inventor  to  the  user,  without  reserving 
any  control  over  it,  and  without  expecting  to  make  any  change 
in  it,  or  without  any  restriction.2 

If  the  inventor  uses  his  invention  for  profit,  and  not  by 
way  of  experiment,  that  is  a  public  use,3  unless  actual  use 
resulting  in  profit  is  necessary  to  show  the  inventor  how  to 
perfect  his  invention,  and  unless  he  does  perfect  it  in  ac- 
cordance with  the  teachings  of  such  use  ;4  but  experimental 
use  becomes  public  use  when  it  extends  further,  either  in 
time,  or  in  number  of  instances,  than  is  reasonably  re- 
quired to  test  the  invention.5  Nor  will  the  fact  that  the 
inventor  is  but  an  employee  in  the  place  where  he  uses  his 
invention,  or  the  fact  that  the  profit  goes  primarily  to  his 
employer,  oust  the  operation  of  this  rule.6 

To  constitute  public  use,  it  is  not  necessary  that  more 
than  one  specimen  of  the  thing  invented  should  have  been 
publicly  used,7  nor  that  more  than  one  person  should  have 
known  of  that  use.8  Nor  is  it  necessary  to  public  use  that 
the  article  used  could  have  been  seen  by  the  public  eye,  if 


1  Elizabeth  v.  Pavement  Co.  97  6  International  Tooth  Crown  Co. 
U.  8  135,  1877.  «.  Gaylord,  140  U.  8.  63,  1891. 

2  Root  v.  Third  Avenue  Railroad  «  Worley  v.  Tobacco  Co.  104  U. 
Co.  146  U.  8.  221,  1892;  Delemater  8.  340,  1881. 

«.  Heath,  58  Fed.  Rep.  416,  1893.  '  Consolidated  Fruit  Jar  Co.  v. 

3  Elizabeth  v.  Pavement  Co.  97  Wright,  94  U.  8  94,  1876;  Jones  v. 
U.  8.  137,  1877.  Barker.  11  Fed  Rep.  597,  1882. 

4  Sprague  v.  Mfg.  Co.  12    Fed.  8  Egbert  v.  Lippmann,  104  U.  8. 
Rep.  724,  1882.  336,  1881. 


CHAP.  V.]  ABANDONMENT.  85 

the  ordinary  use  of  such  articles  is  veiled  from  view.1 

§  95.  Experimental  use  is  never  public  use  within  the 
meaning  of  the  statute,  if  it  is  conducted  in  good  faith  for 
the  purpose  of  testing  the  qualities  of  the  invention,  and  for 
no  other  purpose  not  naturally  incidental  to  that.*  In  such 
a  case  it  is  immaterial  whether  the  experimental  use  dis- 
closed a  necessity  for  improvement,  or  disclosed  no  such 
necessity  ;  and  is  also  immaterial  whether  the  use  was  con- 
ducted with  secrecy  or  not.  It  may  indeed  have  been  had 
in  the  open  air,  and  have  continued  every  day  for  several 
years,  and  have  been  known  to  hundreds  of  persons,  and 
have  incidentally  inured  to  the  profit  of  the  user  and  of  the 
public,  and  still  not  be  a  public  use,  within  the  meaning  of 
the  statute,  if  the  nature  of  the  invention  was  such  that  only 
long-continued  out-door  use  could  show  whether  the  inven- 
tion .possessed  utility,  or  show  in  what  respects,  if  any,  it 
required  to  be  improved.3  The  liberal  ideas  which  under- 
lie the  decision  just  cited  will  doubtless  be  applied  to  every 
variety  of  invention,  as  occasion  serves,  and  will  be  found 
elastic  enough  to  cover  every  meritorious  case.  Indeed, 
Judge  LOWELL  went  still  further  in  the  direction  of  liberally 
allowing  scope  to  experimental  use,  and  decided  that  such 
use  is  not  public  use  within  the  meaning  of  the  law,  where, 
in  order  to  test  its  comparative  as  well  as  its  absolute  utility, 
and  in  order  to  convince  others  of  its  merits,  an  inventor 
allows  them  to  use  his  invention  after  he  has  himself  be- 
come satisfied  that  it  is  useful.4  But  where  the  main  object 
of  the  use  was  profit,  and  improvement  was  only  an  inci- 
dental aim,  the  use  is  not  experimental  in  the  eye  of  the 
law ; 5  and  proof  of  the  experimental  character  of  any  use 


1  Egbert  v.  Lippmann,  104  U.  8.  Rep.765, 1893;  Harmons.  Struthers, 
336,     1881;     International     Tooth  57  Fed.  Rep.  641,  1893. 

Crown  Co.  v.  Gaylord,  140  U.  S.  58,  3  Elizabeth  v.  Pavement  Co.  97, 

1891.  U.  S.  134,' 1877. 

2  Beedle  v.  Bennett,  122  U.  S.  77,  4  Sinclair  v.  Backus,  5  Bann.  & 
1886;  Harmon  v.  Struthers,  43  Fed.  Ard.  81.  1880. 

Rep.443, 1890;  Pacific  Cable  Railroad  5  Smith    &  Griggs  Mfg.  Co.    v. 

Co.  v.  Butte  City  Ry.  Co.  55  Fed.  Sprague,  123  U.  S.  256,  1887. 


86  ABANDONMENT.  [CHAP.  V. 

which  occurred  earlier  than  two  years  before  the  application 
for  a  patent,  must  be  full,  unequivocal,  and  convincing,  or 
it  cannot  prevail  to  save  that  patent  from  invalidity.1 

Public  use  by  a  stranger,  without  the  knowledge  of  the 
inventor,  more  than  two  years  before  the  inventor  applies  for 
a  patent,  generally  has  the  same  operation  of  constructive 
abandonment,  that  public  use  by  the  inventor  himself  would 
have  ;2  but  Judge  WHEELEK  decided,  that  where  the  inventor 
continued  his  experiments  legitimately,  until  less  than  two 
years  before  he  applied  for  his  patent,  that  patent  will  not 
be  defeated  by  the  fact  that  another  person  constructed, 
and  still  another  used,  his  invention,  without  his  knowledge, 
more  than  two  years  before  the  application  for  the  patent 
was  made.3 

§  96.  What  is  being  "  on  sale,"  within  the  meaning  of  the 
statute  ?  The  answer  to  this  question  also,  can  now  b#  ac- 
curately delineated  in  nearly  or  quite  all  of  its  boundaries. 

A  single  instance  of  sale  of  one  specimen  of  the  thing  in- 
vented is  enough  to  constitute  putting  the  invention  on 
sale,4  and  it  is  immaterial  if  the  purchase  price  is  not  paid 
more  than  two  years  before  the  application.5  Indeed  a  de- 
vice will  be  on  sale  within  the  meaning  of  the  law,  if  it  is 
offered  for  sale,  whether  any  specimen  of  it  is  actually  sold 
or  not.6  If,  however,  the  nature  of  the  invention  is  such 
that  the  inventor  is  obliged  to  put  it  into  the  hands  of  others 
for  crucial  experiment,  he  may  sell  specimens  to  those  others 
for  that  purpose,  and  such  a  sale  will  not  be  obnoxious  to 
the  law  now  under  consideration.7  But  if  the  invention 
could  have  been  tested  by  the  inventor  on  his  own  premises, 
as  well  as  by  any  one  there  or  elsewhere,  then  either  an 


1  Smith    &    Griggs  Mfg.   Co.   v.  5  Anderson  v    Monroe,   55    Fed. 
Sprague,  123  U.  S.  254,  1887.  Rep.  405,  1893. 

2  Andrews  v.  Hovey,  123  U.  8. 267,  6  Plimpton  v.  Winslow,   14  Fed. 
1887;  124  U.  S.  694,  1887.  Rep.  921,  1883. 

3  Campbell  v.  New  York,  47  Fed.  7  Graham  v.  McCormick,  5  Bann. 
Rep.  515,  1891.  &  Ard.  244,  1880;  Graham  v.  Mfg. 

4  Consolidated  Fruit  Jar  Co.  v.  Co.  11  Fed.  Rep.  142,  1880. 
Wright,  94  U.  S.  94,  1876. 


CHAP.  V.]  ABANDONMENT.  87 

absolute  or  a  conditional  sale  of  a  specimen  of  the  thing 
invented,  will  be  putting  the  invention  on  sale,  unless  there 
is  unequivocal  evidence  that  the  sale  was  made  for  the  pur- 
pose of  experimental  use.1.  And  a  sale  for  the  purpose  of 
testing  the  commercial  merits  of  an  invention,  will  consti- 
tute being  "  on  sale  ;"2  but  where  a  specimen  of  an  inven- 
tion is  built  or  made  to  order,  it  is  not  "  on  sale  "  till  it  is 
completed,  delivered,  and  accepted.3 

§  97.  An  assignment  of  the  inchoate  right  to  an  invention, 
is  not  such  a  sale  as  will  be  obnoxious  to  the  statute  now 
under  explanation.4  So  far  from  furnishing  evidence  of 
abandonment,  the  sale  of  the  inchoate  right  to  a  patent 
indicates  an  expectation  that  such  a  patent  will  be  obtained, 
and  that  right  be  thus  translated  into  a  legal  title. 

§  98.  Precise  identity  between  the  thing  covered  by  the 
patent,  and  the  thing  which  the  inventor  allowed  to  be  in 
public  use  or  on  sale  more  than  two  years  before  he  applied 
for  that  patent,  is  not  necessary  to  constitute  constructive 
abandonment  of  the  invention  covered  by  the  latter.  It  is 
enough  if  the  two  devices  are  substantially  the  same,5  or  if 
the  advance  from  one  to  the  other  did  not  amount  to  inven- 
tion ;  6  but  it  is  not  enough  that  the  two  devices  perform 
the  same  function  and  are  somewhat  similar  in  construction 
and  in  mode  of  operation.7 

§  99.  No  constructive  abandonment  results  from  any 
mere  making  of  a  specimen  of  an  invented  thing  more  than 
two  years  before  the  application  for  a  patent.8  But  where 
an  invention  consists  in  a  process  of  making  a  thing,  the 
making  of  a  specimen  of  that  thing,  by  that  process,  is  a 

1  Henry  v.  Soapstone  Co.  5  Bann        1882;  Theberath  «.   Trimming  Co. 
&  Ard.   108,    1880;    DeLamater  ».       15  Fed.  Rep.  251,  1883. 

Deeley,  53  Fed,  Rep.  380,  1892.  6  International  Tooth  Crown  Co. 

2  Smith  &  Davis  Mfg.  Co.  «.  Mel-      v.  Gaylord,  140  U.  S.  62, 1891. 

Ion,  58  Fed.  Rep.  707, 1893..  7  Draper  v.    Wattles,  3  Bann.  & 

3  Campbell  «.  New  York,  36  Fed.      Ard  618,  1878. 

Rep.  261, 1888.  8  Comstock  v.  Sandusky  Seat  Co. 

4  Elm  City  Co.    v.    Wooster,  6  3  Bann.  &  Ard.  188,   1878;    Camp- 
Fisher,  452,  1873.  bell  v.  New  York,  36  Fed.  Rep.  261, 

5  Hall  v.  Macneal,  107  U.  S.  90,  1888. 


88  ABANDONMENT.  [CHAP.  V. 

use  of  that  process,  and  is  therefore  subject  to  the  rules 
which  govern  using,  and  not  to  that  which  applies  to 
making  only. 

§  100.  Public  knowledge  of  an  invention,  acquired  with 
the  consent  of  the  inventor,  prior  to  his  application  for  a 
patent,  was  formerly  fatal  to  the  validity  of  any  patent 
granted  for  that  invention.  The  Patent  Act  of  1793 :  pro- 
vided that  to  be  patentable,  a  thing  must  not  have  been 
known  before  the  making  of  an  application  for  a  patent 
thereon.  The  Supreme  Court  construed  that  enactment  to 
mean  only  that  the  invention  must  not  have  been  known  to 
the  public  with  the  consent  of  the  inventor.2  The  Patent 
Act  of  1836  repealed  all  prior  statutes  on  the  subject  of 
patents,  and  did  not  provide  that  any  unfavorable  effect  on 
an  inventor's  right  should  result  from  public  knowledge  of 
his  invention,  acquired  at  any  time  after  its  production  by 
him.3  Nor  has  any  later  statute  made  any  such  provision. 
Since  1836  there  has,  therefore,  been  no  reason  for  an  in- 
ventor to  keep  his  invention  secret,  unless  he  proposed  to 
rely  upon  secrecy,  and  not  upon  a  patent,  for  his  profits,  or 
unless  he  feared  that  some  other  person,  obtaining  knowl- 
edge of  the  invention,  would  falsely  claim  it  as  his  own. 

§  101.  A  public  use  or  a  sale  of  a  specimen  of  a  newly  in- 
vented thing,  occurring  in  any  foreign  country  after  its 
invention  by  an  applicant  for  an  American  patent,  but  more 
than  two  years  before  his  application  is  made,  will  not  have 
the  same  effect  upon  such  a  patent,  that  it  would  have  had 
if  that  public  use  or  that  sale  had  occurred  in  the  United 
States.  The  language  of  section  4886  of  the  Revised  Stat- 
utes, contains  no  restriction  as  to  the  country  wherein  the 
public  use  or  the  sale  of  a  newly  invented  thing,  more  than 
two  years  prior  to  an  application  for  a  patent  thereon,  must 
occur,  in  order  to  constitute  constructive  abandonment  of 
that  invention ;  and  it  was  held  by  one  Circuit  Court,  that  no 


1  1  Statutes  at  Large,  Ch.  11.  Sec-      18,  1829. 

tion  1,  p.  318.  3  Elizabeth   v.   Pavement  Co.  97 

2  Pennock  v.  Dialogue,  2  Peters,      U.  S.  136,  1877. 


CHAP.  V.]  ABANDONMENT.  .         89 

such  restriction  exists.1  But  the  Supreme  Court  reversed 
that  decision,  and  decided  that  sections  4886,  4887,  4920 
and  4923  of  the  Kevised  Statutes,  taken  together,  show  that 
the  right  of  an  inventor,  to  obtain  a  United  States  patent, 
is  not  lost  by  reason  of  the  fact  that  his  invention  was  in 
public  use  or  on  sale,  in  some  foreign  country,  more  than 
two  years  before  his  application  for  a  United  States  patent 
thereon.2 

§  103.  Constructive  abandonment  of  an  invention,  after 
an  application  for  a  patent  thereon,  necessarily  results  from 
constructive  abandonment  of  that  application,  in  certain 
classes  of  cases  which  are  explained  in  the  chapter  on  ap- 
plications.3 In  still  another  class  of  cases,  constructive 
abandonment  of  an  invention,  after  an  application  for  a  pat- 
ent thereon,  necessarily  results  from  a  particular  kind  of 
constructive  abandonment  of  that  application,  unless  a  new 
application  is  filed  within  a  certain  time  after  such  abandon- 
ment. That  class  of  cases  is  the  following.  Where  an 
applicant  omits  to  pay  the  final  fee  within  six  months  from 
the  time  at  which  his  application  was  allowed,  and  notice 
thereof  sent  to  him  or  to  his  agent,  and  where  he  also  omits 
to  make  any  new  application  for  a  patent  on  the  same  in- 
vention within  two  years  after  such  an  allowance,  he  loses 
all  right  to  obtain  a  patent  for  that  invention.4 

§  104.  The  statutory  law  relevant  to  constructive  abandon- 
ment, resulting  from  a  public  use  or  from  a  sale  of  a  newly 
invented  thing,  more  than  two  years  before  an  application 
for  a  patent,  is  a  law  which  operates  inflexibly  upon  all 
cases  coming  within  it.  Its  effect  cannot  be  obviated  by 
any  evidence  showing  reasons  for  the  delay,  however  ample 
and  meritorious  those  reasons  may  be.5  The  rule  of  this 
section  doubtless  applies  also  to  the  constructive  abandon- 
ment explained  in  the  last. 


1  Gandy  ».   Belting  Co.   28  Fed.  3  Section  147  of  this  book. 

Rep.  570,  1886.  4  Revised  Statutes,  Section  4897. 

2  Gandy  v.  Belting  Co.  143  U.  S.  5  Sisson  «.  Gilbert.  9  Blatch,  189, 
592,  1892.  1871. 


90         .  ABANDONMENT.  [CHAP.  V. 

§  105.  Surrender  of  an  invention  may  be  effected  after 
the  grant  of  letters  patent  therefor,  by  means  of  a  formal 
surrender  of  those  letters  patent.  A  proceeding  of  the 
kind  was  mentioned  by  the  Supreme  Court  as  being  con- 
fessedly proper  as  early  as  1832,1  and  an  actual  surrender 
of  the  sort  was  tacitly  approved  by  that  tribunal  about 
twenty  years  later.2 

§  106.  No  abandonment  of  an  invention  after  the  issue  of 
letters  patent  thereon  has  ever  been  judicially  decided  to 
exist  in  the  United  States.  The  Patent  Act  of  1832 3  pro- 
vided that  a  certain  class  of  aliens  might  obtain  United 
States  patents  who  had  theretofore  been  excluded  from  that 
privilege ;  but  it  coupled  with  that  provision  an  enactment 
that  every  patent  granted  by  virtue  of  that  Act  should  cease 
and  determine  in  case  of  failure  on  the  part  of  the  patentee 
to  introduce  the  invention  into  public  use  in  the  United 
States  within  one  year  from  the  issuing  of  the  patent,  or  in 
case  of  a  discontinuance  of  such  public  use  for  any  period 
of  six  months,  or  in  case  of  failure  on  the  part  of  the  pat- 
entee to  become  a  citizen  of  the  United  States.  In  provid- 
ing such  a  rule  of  constructive  abandonment  for  a  certain 
class  of  aliens,  Congress  showed  that  it  did  not  overlook 
the  subject  of  non-user  of  patented  inventions;  and  in 
omitting  to  provide  any  such  rule  for  citizens  of  the  United 
States,  Congress  showed  that  it  did  not  intend  constructive 
abandonment  to  result  from  non-user  in  their  cases.  Even 
as  to  aliens,  the  policy  of  the  law  upon  the  point  was  soon 
changed.  The  Act  of  1836  repealed  all  former  patent  stat- 
utes, and  did  not  re-enact  the  provision  just  cited  from  the 
Act  of  1832,  nor  put  any  corresponding  restrictions  upon 
any  class  of  patentees.  Nor  has  any  later  statute  contained 
any  provision  of  the  kind.  The  fair  inference  from  this 
course  of  legislation  seems  to  be  that  Congress  does  not 
intend  any  patent  right  to  be  lost  on  any  ground  of  non- 
user  of  that  right.  Even  before  Congress  had  thus  indicated 

1  Grant  v.  Raymond,  6  Peters,  240,      74,  1854. 

1832.  3  4  Statutes  at  Large,  Ch.  203,  p. 

2  Battin  v.  Taggert,  17  Howard,       577. 


CHAP.  V]  ABANDONMENT.  91 

its  intention  on  the  subject,  Justice  WASHINGTON  instructed 
a  jury  that  no  disuser  of  an  invention,  after  it  is  patented, 
can  amount  to  an  abandonment  so  as  to  deprive  the  pat- 
entee or  his  assignees  of  their  exclusive  right  to  it  for  the 
term  of  the  patent.1  So,  also,  the  Supreme  Court  has  held 
that  no  presumption  arises  against  a  patent  from  any  use 
of  the  invention  by  the  public  after  the  patent  is  granted.2 
Since  no  abandonment  of  an  invention,  after  it  is  patented, 
can  arise  out  of  any  existing  statute,  nor  be  based  on  any 
non-user  by  the  patentee,  or  on  any  user  by  the  public,  we 
seem  shut  up  to  the  conclusion  that  no  such  abandonment 
is  known  to  our  laws. 

§.107.  Acquiescence  by  a  patentee  in  unlicensed  use  of 
his  invention  during  the  life  of  the  patent,  has  sometimes 
been  said  or  been  intimated  by  courts  to  amount  to  an 
abandonment  of  the  patent  and  of  the  invention.  Four 
cases  containing  such  statements  or  suggestions  are  to  be 
found  in  the  reports.  In  two  of  them  the  judges  made  their 
observations  on  the  subject,  in  spite  of  their  decisions  that 
no  such  question  was  involved  in  the  pleadings.  In  the 
other  two  cases  the  views  of  the  judges  were  inserted  in 
charges  to  juries,  but  inasmuch  as  the  juries  found  for  the 
respective  plaintiffs,  it  seems  that  there  were  no  facts  in  the 
cases  which  called  for  such  statements  in  the  charges.  The 
opinions  of  the  four  judges  on  the  point  seem,  therefore,  to 
be  no  more  weighty  than  the  reasons  which  support  them. 
But  no  reasons  applicable  to  the  subject  of  abandonment  of 
a  patent  are  contained  in  either  of  the  cases,  though  one  of 
them  contains  statements  of  reasons  adapted  to  support  the 
doctrine  of  estoppel.  Nor  do  the  four  cases  agree  among 
themselves  relevant  to  the  character  or  to  the  quantity  of 
acquiescence  needed  to  support  an  hypothesis  of  abandon- 
ment of  a  patent.  In  Wyeth  v.  Stone 3  Justice  STORY  inti- 
mated that  such  acquiescence  must  be  without  objection, 


1  Gray  v.  James,   1  Peters  C.  C.      1833. 

403,  1817.  3  Wyeth  «.  Stone,  1   Story,  282, 

2  Shaw  v.  Cooper,  7  Peters,  320,       1840. 


92  ABANDONMENT.  [CHAP.  V. 

and  must  continue  for  a  series  of  years.  In  Ransom  v.  New 
York ]  Judge  HALL  placed  no  such  limitation  as  the  last  of 
these  upon  the  doctrine,  and  if  he  hinted  at  the  first  of  them 
he  hinted  but  vaguely.  In  Bell  v.  Daniels 2  Judge  LEAVITT 
said  that  it  would  require  a  strong  case  to  prove  abandon- 
ment of  a  patent  actually  granted.  In  Williams  v.  Railroad 
Co.3  Judge  WALLACE  said:  "Neither  does  mere  delayer 
acquiescence  establish  an  abandonment  or  dedication  of 
the  patent.  There  must  be  an  acquiescence  in  the  appro- 
priation of  the  right  of  such  a  character  as  reasonably  to 
induce  the  belief  that  the  owner  intended  to  relinquish  it 
to  the  public  use."  The  opinions  cited  in  this  section,  so 
far  as  they  disagree  with  the  statutes  and  decisions  cited  in 
the  last,  do  not  agree  in  that  disagreement,  and  they  seem 
insufficient  to  outweigh,  or  even  to  modify,  the  doctrine  set 
forth  in  that  section. 

§  108.  Questions  relevant  to  actual  or  to  constructive 
abandonment  of  inventions  are  questions  of  fact  ;4  and  every 
reasonable  doubt  relevant  to  any  such  question  should  be 
solved  in  favor  of  the  patent,  for  the  law  does  not  favor  for- 
feiture.5 


1  Ransom  v.  New  York,  1  Fisher,  ard,  330,  1858. 

273,  1856.  5  Pitts  v.  Hall,  2  Blatch.  238. 1851; 

2  Bell  v.   Daniels,   1    Bond,  219,  McCormick  v.  Seymour,  2  Blatch. 
185a  256,  1851;  Birdsall  v.  McDonald,  1 

3  Williams  «.  Boston  &  Albany  Bann.  &  Ard.  165,  1874;  Comstock 
Railroad  Co.  4  Bann.  &  Ard.  441,  v.   Sandusky  Seat  Co.  3  Bann.  & 
1879.  Ard.  188,  1878;  Anderson  v.  Eiler, 

4  Battin  v  Taggert,  17  Howard,  46  Fed  Rep.  779,  1891. 
84, 1854;  Kendall  v.  Winsor,  21  How- 


CHAPTER  VI. 


APPLICATIONS. 


109.  Constituents   of    applications 
for  patents. 

110.  The  petition. 

111.  Constituents  of  specifications. 

112.  The  preamble. 

113.  The  general  statement  of  the 
invention. 

114.  The  description  of  the  draw- 
ings. 

115.  The  detailed  description  of  the 
invention. 

116.  The  claim  or  claims. 

117.  Claims  in  machine  patents. 
117«.  Methods  of  specifying  parts 

in  claims. 

118.  Claims  in  patents  for  manu- 
factures. 

119.  Claims  in  patents  for  compo- 
sitions of  matters, 

120.  Claims  in  process  patents. 
120«.  Claims  in  design  patents. 

121.  The  signatures. 

122.  The  form  of  the  oath. 

123.  The  constituents  of  the  oath. 

124.  Affirmations. 

125.  The  Patent  Office  fees. 

126.  Drawings. 

127.  Models. 

128.  Specimens  of  compositions  of 
matter. 

129.  Dates  of  applications. 

130.  The  examination  by  the  Patent 
Office. 


131.  Notification  of  rejection. 

132.  Appeals. 

133.  Appeals  to  the  Court  of  Ap- 
peals of  the  District  of  Colum- 
bia. 

134.  Bills  in  equity  to  compel  the 
Commissioner  to  grant  patents. 

135.  Amendment  of  applications. 

136.  The  foundation  of  the  right  of 
amendment. 

137.  When  an  applicant  may  am  end. 

138.  How  an  applicant  may  amend. 

139.  When     an     applicant     must 
amend. 

140.  Interferences. 

141.  Number  of  interferences. 

142.  Decision  on  interference  is  not 
conclusive. 

143.  Caveats 

144.  Appeals  from  decrees  on  bills 
in  equity. 

145.  Abandonment  of  applications 

146.  Constructive  abandonment  of 
applications. 

147.  Constructive  abandonment  of 
application  working  construc- 
tive   abandonment   of    inven- 
tion. 

148.  Effect  of  Commissioner's  de- 
cision on  questions  relevant  to 
applications. 


§  109.  AN  application  for  a  patent  consists  of  the  follow- 
ing transactions:  The  deposit  in  the  Patent  Office  of  a 
written  petition  to  the  Commissioner  of  Patents ;  the  like 

93 


94  APPLICATIONS.  [CHAP.  vi. 

deposit  of  a  written  specification  of  the  invention ;  the 
making  of  an  oath ;  the  payment  of  the  Patent  Office  fee ; 
and  in  some  cases  the  deposit  of  a  drawing ;  and  in  some 
cases  the  deposit  of  a  model ;  and  in  some  other  cases  the 
deposit  of  specimens.1  Applications  and  proceedings  on 
applications  are  primarily  governed  by  the  provisions  of 
the  Revised  Statutes.  Where  those  provisions  do  not  cover 
a  particular  point,  that  point  is  governed  by  the  rules  of 
the  Patent  Office.8  Every  such  rule,  unless  it  is  inconsist- 
ent with  law,  is  as  authoritative  as  the  Revised  Statutes 
themselves.3 

§  110.  The  petition  is  a  communication,  signed  by  the 
applicant  and  addressed  to  the  Commissioner  of  Patents, 
stating  the  name  and  residence  of  the  petitioner,  and  re- 
questing the  grant  of  a  patent  for  the  invention  therein 
designated  by  name  and  by  a  reference  to  the  specification 
for  a  full  disclosure  thereof.4  The  petition  must  be  the 
petition  of  the  inventor,  and  not  of  an  assignee  of  the  in- 
ventor, though  it  may  properly  request  that  the  patent,  when 
granted,  shall  be  granted  to  an  assignee.5  If,  however,  the 
inventor  becomes  insane  or  dies  before  executing  a  petition, 
the  petition  may  be  made  and  signed  by  his  guardian  in 
case  of  his  insanity,6  or  by  his  executor  or  administrator  in 
case  of  his  death.7 

§  111.  The  specification  properly  consists  of  seven  parts. 
1.  The  preamble,  giving  the  name  and  residence  of  the 
applicant,  the  title  of  the  invention,  and  the  name  of  any 
foreign  country  from  which  he  or  his  assigns  may  have 
received  a  foreign  patent  for  the  same  invention,  and  other 
particulars  connected  therewith.  2.  A  general  statement  of 


1  Revised  Statutes,  Sections  4888,  4  Patent  Office  Rule  33. 

4889,  4890,  4891,  4892,  4893;  Rules  5  Revised  Statutes,  Section  4895; 
of  Practice  of  the  United  States  Patent  Act  of  March  3,  1837,  Sec- 
Patent  Office,  revised  April  1, 1892.  tion  6. 
Rule  30.  6  Whitcomb  v.  Spring  Valley  Coal 

2  Revised  Statutes,  Section  483.  Co.  47  Fed.  Rep.  658, 1891. 

3  United  States  v.  Commissioner  7  Revised  Statutes,  Section  4896; 
of  Patents,  22  Oft  Gaz.  1365,  1882.  Patent  Act  of  April  17, 1800,  Sec.  2. 


CHAP  VI.]  APPLICATIONS.  95 

the  nature  and  object  of  the  invention.  3.  A  brief  descrip- 
tion of  the  drawings,  if  drawings  are  made,  showing  what 
each  view  represents.  4.  A  detailed  description  of  the  in- 
vention, explaining  fully  its  construction  and  mode  of  opera- 
tion, if  it  is  a  thing,  or  the  manner  of  performing  it,  if  it  is 
a  process.  5.  The  claim  or  claims.  6.  The  signature  of 
the  inventor.  7.  The  signatures  of  two  witnesses.1 

§  112.  The  preamble  states  the  name  and  residence  of  the 
inventor  and  the  title  of  the  invention,  in  order  to  connect 
the  specification  with  the  petition ;  and  it  states  the  partic- 
ulars of  foreign  patents  previously  granted  for  the  same 
invention,  in  order  to  inform  the  Commissioner  whether  he 
is  to  grant  a  patent  for  seventeen  years,  or  whether,  in  pur- 
suance of  Section  4887  of  the  Revised  Statutes,  he  is  to  so 
limit  the  patent  that  it  will  purport  to  expire  at  the  same 
time  with  some  foreign  patent  for  the  same  invention. 
There  is  no  statute  which  makes  it  the  duty  of  the  applicant 
to  furnish  the  Commissioner  with  information  on  that  sub- 
ject. If  he  omits  to  do  so,  and  if  the  Commissioner  ascer- 
tains the  facts  elsewhere,  and  limits  the  term  of  the  patent 
accordingly,  then  every  purpose  is  answered  that  would 
have  been  answered  if  the  applicant  had  stated  the  facts  in 
his  application.  The  rules  of  the  Patent  Office,  however, 
do  require  the  applicant  to  mention  such  a  foreign  patent, 
if  any  exists,2  and  in  the  absence  of  such  mention  the  Com- 
missioner, if  he  grants  a  patent,  grants  it  for  the  term  of 
seventeen  years.  If  subsequent  litigation  discloses  the 
prior  granting  of  a  foreign  patent  for  a  term  sooner  ending, 
it  will  be  impossible  for  the  United  States  patent  to  con- 
tinue in  force  for  the  full  term  expressed  on  its  face,  but  it 
will  be  given  the  same  duration  that  it  ought  to  have  pur- 
ported to  have.3 

§  113.  The  general  statement  of  the  nature  and  object  of 
the  invention  is  a  convenient  mode  of  introducing  the  de- 
tailed description.  Every  such  statement  should  be  free 


1  Patent  Office  Rule  39.  »  Telephone  Cases,  126  U.  S.  572, 

2  Patent  Office  Rule  39.  1888. 


96  APPLICATIONS.  [CHAP.  VI. 

from  any  particularity  or  limitation  which  is  not  necessary 
to  distinguish  the  invention  or  inventions  covered  by  the 
claim  or  claims  from  all  earlier  inventions ;  for  where  a  gen- 
eral statement  contains  such  a  particularity  or  limitation 
there  is  always  danger  that  it  will  be  imported,  by  implica- 
tion, into  one  or  more  of  the  claims,  and  there  operate  to 
reduce  the  area  covered  by  the  patent  to  territory  more 
narrow  than  the  state  of  the  prior  art  required. 

§  114.  The  description  of  the  drawings  is  a  convenience  in 
aid  of  their  understanding,  but  if  that  description  is  omitted, 
and  all  reference  to  the  drawings  is  excluded  from  the  speci- 
fication, no  statutory  requirement  is  necessarily  departed 
from.1  In  such  a  case,  however,  the  specification  would 
perhaps  be  impossible  to  be  understood,  and  therefore  be 
obnoxious  to  the  rules  stated  in  the  next  section. 

§  115.  The  detailed  description  must  be  full  enough,  and 
clear  enough,  and  concise  enough,  and  exact  enough,  to 
enable  any  person  skilled  in  the  art  or  science  to  which  it 
appertains,  or  with  which  it  is  most  nearly  connected,  to 
make  and  use  the  invention,  if  it  is  a  machine  or  a  manu- 
facture, or  to  compound  the  invention,  if  it  is  a  composition 
of  matter,  or  to  perform  the  invention,  if  it  is  a  process.2 
If  the  description  falls  below  this  standard,  the  patent,  if 
granted,  will  be  void.3  But  this  standard  may  be  reached, 
in  the  case  of  a  design,  by  a  reference  to  the  drawing  or 
photograph4  annexed  to  the  specification.  In  the  statute  by 
which  this  standard  is  established,  the  phrase  "  any  persons 
skilled  in  the  art  or  science  "  includes  persons  of  ordinary 
and  fair  information  and  skill  in  the  relevant  art  or  science ; 
and  that  phrase  is  not  confined  to  the  most  eminent  scien- 
tists, or  to  the  most  competent  experts,  in  that  science  or  art.5 

The  statute  also  says  that  in  case  of  a  machine,  the  appli- 
cant shall  explain  the  principle  thereof,  and  the  best  mode  in 

1  Emerson  v.  Hogg,  2  Blatch,  9         *  Dobson  v.  Dornan,  118  U.  S.  14, 
1845.  1885;  Anderson  v.  Saint,  46    Fed. 

2  Revised  Statutes,  Section  4888.        Rep,  760,  1891. 

a  O'Reilly  v.  Morse,  15  Howard,  5  Tannage  Patent  Co.  v.  Zahn,  66. 
62,  1853.  Fed.  Rep.  989,  1895. 


CHAP.  VI.  APPLICATIONS.  97 

which  he  has  contemplated  applying  that  principle,  so  as  to 
distinguish  it  from  other  inventions.1  These  provisions 
must  be  read  in  the  light  of  their  avowed  object.  That 
object  is  identification.  The  first  provision  cannot  mean  that 
the  inventor  must  infallibly  explain  the  law  of  nature  which 
makes  his  machine  work  ;  for  if  it  means  that,  neither  Morse 
nor  Bell  complied  with  it  when  describing  the  telegraph  or 
the  telephone,  and,  indeed,  neither  Morse  nor  Bell  nor  any 
man  could  have  done  so.  The  second  provision  cannot 
mean  that  every  inventor  must  infallibly  judge  which  of 
several  forms  of  his  machine  will  eventually  be  found  to 
work  best,  for  if  it  means  that,  it  requires  what  is  often 
impossible  :  requires  the  inventor  to  foresee  the  ultimate 
effects  of  new  and  comparatively  untried  causes.  The  first 
provision  means  that  the  essential  distinctive  characteristic 
of  the  machine  shall  be  explained  ;  and  the  second  provision 
means  that  the  inventor  shall  state  the  mode  which  he  con- 
templates to  be  the  best.2  Inasmuch  as  the  validity  of  a 
patent  depends  on  the  sufficiency  of  the  description,  the 
subject  of  this  section  is  treated  with  more  detail  in  the 
chapter  on  letters  patent,  the  seventh  of  this  book.  Enough 
has  been  outlined  in  this  connection,  to  show  what  kinds  of 
statements  those  decriptions  need  to  contain. 

§  116.  The  claim  or  claims  constitute  a  necessary  part  of 
every  specification.  The  statutory  requirement  in  this  re- 
gard is,  that  the  applicant  "  shall  particularly  point  out  and 
distinctly  claim  the  part,  improvement,  or  combination 
which  he  claims  as  his  invention."3  The  practice  of  the 
Patent  Office  has  always  been  to  require  the  claim  or 
claims  to  be  made  in  that  part  of  the  specification  which 
immediately  precedes  the  signatures  It  is  a  practice  of 
many  solicitors  of  patents  to  write  claims  in  vague  phrase- 
ology, with  an  idea  that  vagueness  is  elasticity,  and  that 
elasticity  is  excellence.  Such  a  practice  is  neither  honest 


1  Revised  Statutes,  Section  4888.      1857. 

2  Carver  v.  Mfg.  Co.  2  Story,  432,         8  Revised  Statutes,  Section  4888. 
1843;  Page  v.  Ferry,  1   Fisher,  309, 


98  APPLICATIONS.  [CHAP.  VI. 

nor  expedient.  It  is  not  honest,  because  it  is  often  intended, 
and  always  adapted  to  deceive  the  public,  and  to  lead  indi- 
viduals into  unintended  infringement.  It  is  not  expedient, 
because  dishonesty  is  bad  policy  in  matters  of  patents,  as 
in  all  other  human  affairs,  and  because  vagueness  of  claims 
may  make  a  patent  void  which  would  otherwise  be  valid. 
It  is  the  practice  of  many  other  solicitors  of  patents  to  write 
claims  in  loose  phraseology,  because  they  do  not  know  how 
to  write  precise  sentences.  By  multiplying  words  they 
hope  to  hit  the  mark,  on  the  same  principle  that  the  user 
of  a  shotgun  hopes  to  hit  a  solitary  bird.  But  the  princi- 
ples which  apply  to  shotguns  do  not  apply  to  rhetoric. 
The  true  rhetorician  uses  a  rifle,  not  a  blunderbus.  With 
him  every  word  hits  its  target,  because  it  is  adapted  to  do 
so,  and  because  he  knows  how  to  aim  it. 

Writing  a  claim  for  a  patent  may  require  as  many  points 
of  information  and  powers  of  mind,  as  can  ever  be  required 
for  any  prose  writing  of  similar  length.  More  than  half 
the  chapters  of  this  book  contain  such  points  of  inforrna- 
tian,  but  neither  this  nor  any  other  law  book,  can  embody 
all  that  the  penner  of  such  a  claim  requires  to  know.  A 
few  leading  points  may,  however,  be  conveniently  stated  in 
this  place. 

§  117.  In  a  case  where  the  description  sets  forth  an  entire 
machine,  the  applicant  may  lawfully  make  a  claim  coexten- 
sive with  the  description,  if  the  machine  as  a  whole  pos- 
sesses novelty.  But  such  a  claim  ought  seldom  to  be  the 
only  one  in  a  patent ;  because,  for  reasons  stated  in  the 
chapter  on  infringement,  it  can,  in  most  cases,  be  readily 
evaded.  The  proper  practice  is  to  fix  upon  the  new  parts, 
or  new  combinations,  which  the  described  machine  con- 
tains, and  to  make  a  separate  claim  for  each  of  those  parts, 
and  for  each  of  those  combinations.1  Indeed  the  applicant 
may,  if  he  will,  apply  for  and  receive  a  separate  patent  for 
each  of  those  parts  and  combinations.3 


1  Gill  s.Wells,  22  Wallace,  24, 1874;          2  Corn-Planter  Patent,   23  Wai- 
Adams  v.  Jones,  1  Fisher,  530, 1859.      lace,  224, 1874. 


CHAP.  VI.]  APPLICATIONS.  99 

But  one  patent  or  claim  having  been  granted  to  an  in- 
ventor, upon  a  particular  part  or  combination,  as  perform- 
ing particular  functions  ;  no  valid  claim  or  patent  can  be 
afterward  granted  to  him,  on  the  same  part  or  combination, 
as  performing  a  part  only  of  the  functions  called  for  by  the 
claim  of  the  first  patent.1  And  it  is  advisable  to  take  out  all 
patents,  on  the  same  day,  on  different  combinations  of 
parts,  some  of  which  are  in  each  of  the  different  combinations. 
To  secure  a  particular  part  of  a  machine,  a  claim  must  spec- 
ify that  part ;  and  to  secure  a  particular  combination  of 
some  of  the  parts  of  a  machine,  a  claim  must  specify  all  of 
those  parts,  and  the  description  must  explain  their  joint 
mode  of  operation,  and  must  state  their  joint  function.3 

And  a  part  or  a  combination  may  be  claimed  separately, 
though  it  cannot  do  useful  work  separately  from  the  residue 
of  the  machine  or  apparatus  of  which  it  constitutes  a  part.3 
Otherwise  an  infringer  might  take  the  most  important  part 
of  an  invention,  and  by  changing  the  method  of  adapting  it 
to  its  environment,  might  avoid  any  charge  of  infringement. 
The  invention  of  a  needle  with  an  eye  near  the  point,  is  the 
basis  of  all  sewing  machines ;  but  the  methods  of  operat- 
ing such  a  needle  are  many,  and  if  its  inventor  had  been 
obliged  to  make  his  own  method  a  part  of  every  claim  in 
which  the  needle  was  an  element,  his  patent  would  have  been 
practically  worthless.4 

§  117«.  A  part  of  a  machine  when  claimed  alone,  may  be 
specified  by  the  use  of  its  name  in  the  claim,  where  no  other 
part  of  the  machine  has  a  similar  name  ;  but  where  the  use 
of  a  name  alone,  is  not  sufficiently  specific  to  show  what 
part  of  the  machine  is  referred  to,  that  object  can  be  accom- 
plished by  mentioning,  in  the  claim,  the  reference  letter  or 


1  Miller  v.  Eagle  Co.  151  U.  S.  199.  ice  Store  Ry.  Co.  «.  Taylor,  43  Fed. 
1894.  Rep.  251,  1887;  Roberts  v.  Nail  Co. 

2  Parks  v.  Booth,  102  U.   S.    102,  53  Fed.   Rep.  920,  1892;  Holloway 
1880;   Forbush  v.  Cook,  2  Fisher,  «,  Dow,  54  Fed.  Rep.  516,  1893. 
669,  1857.  <  Deeriug  v.  Winona  Harvester 

3  Hancock  Inspirator  Co.  v.  Jenks,  Works,  155  U.  S.  302,  1894. 
21  Fed.  Rep.  915, 1884;  Rapid  Serv- 


100  APPLICATIONS.  [CHAP.  VI. 

numeral,  which  is  used  to  indicate  that  part  in  the  descrip- 
tion and  in  the  drawings.  Such  a  use  of  a  reference  letter 
or  numeral  does  not  necessarily  confine  the  claim  to  a 
part  having  all  the  characteristics  of  the  part  which,  in  the 
drawings,  is  indicated  by  that  letter  or  numeral ; 1  because 
a  claim  which  expressly  covers  a  particular  device,  impliedly 
covers  any  equivalent  of  that  device;  and  other  devices 
will  be  held  to  be  equivalent  or  not  equivalent,  by  means  of 
certain  tests,  which  are  explained  in  the  chapter  on  infringe- 
ment, and  which  are  quite  foreign  to  the  question  whether 
a  particular  device  is  designated  in  a  claim  by  a  reference 
letter  or  numeral,  or  by  a  name  alone,  or  in  some  other 
way. 

It  is  true  that  where  the  particular  characteristics  of  the 
parts  of  the  combination  shown  in  the  drawings  of  a  patent, 
are  all  that  differentiate  it  from  the  prior  art;  and  where  those 
parts  are  specified  in  an  'amended  claim  by  reference  letters 
or  numerals,  in  pursuance  of  a  rejection  by  the  Patent 
Office  of  a  prior  claim  which  was  broad  enough  to  cover 
the  prior  art ;  the  amended  claim  is  limited  to  a  combina- 
tion of  parts  having  those  particular  characteristics  ;  for  if 
not  so  restricted,  the  effect  would  be  to  make  the  claim  co- 
extensive with  what  the  Patent  Office  rejected.2  But  the 
same  thing  is  true,  in  an  otherwise  similar  case,  where  the 
parts  of  the  combination  are  specified,  in  an  amended  claim, 
by  names  alone,  or  in  any  other  way.  The  breadth  or  the 
narrowness  of  a  claim  as  the  case  may  be,  does  not  depend 
upon  any  artificial  rule  of  interpretation ; 3  and  to  narrow 
a  broad  invention  by  reference  letters  or  numerals  alone, 
would  be  to  frame  and  enforce  such  a  rule. 

Where  some  of  the  parts  of  a  combination,  operate 
therein  to  give  motion  to  other  parts,  which  do  the  final 
work  of  the  combination,  it  is  proper  to  specify  the  former 


1  Campbell  Printing  Press  Co  v.  v.  Kearney,  158  U.  S.  469,  1895. 

Harden,  64  Fed.  Rep.  785,  1894.  3  Topliff  v.  Topliff,  145  U.  S.  171. 

a  Knapp  «.  Morss,  150  U.  S.  228,  1892. 
1898;  Lehigh  Valley  Railroad  Co'. 


CHAP.  VI.]  APPLICATIONS.  101 

by  the  use  of  such  terms  as  "  means,"  "  mechanism,"  or 
"  devices "  for  giving  that  motion.1  But  such  general 
language  will  not  include  all  means,  mechanism,  or  devices 
which  can  perform  that  function,  but  only  those  which  are 
shown  in  the  patent,  and  their  equivalents.8  And  in  this 
case  also,  the  question  whether  other  means,  mechanism,  or 
devices  are  equivalents  of  those  shown  in  the  patent,  will  be 
determined  by  the  established  rules  on  that  subject,  rather 
than  by  any  apparent  looseness  or  elasticity  of  the  language 
used  in  the  claims  to  designate  the  parts  involved  in  the 
inquiry. 

§  118.  In  cases  where  the  description  sets  forth  a  manu- 
facture, there  ought  to  be  a  separate  claim  for  each*  of  its 
patentable  features,  or  at  least  for  the  article  without  any 
dispensable  feature  ;  for  if  there  is  but  one  claim,  and  if  all 
those  features  are  covered  by  it,  then  those  persons  who 
manage  to  dispense  with  even  the  least  of  them,  incur  no 
liability  by  making,  using,  or  selling  articles  which  possess 
all  the  others.  3 

§  119  In  cases  where  the  description  relates  to  a  compo- 
sition of  matter,  the  claim  should  cover  that  composition  in 
its  entirety,  and  should,  either  expressly,  or  by  reference  to 
the  description,  specify  the  respective  proportions  which 
the  different  ingredients  bear  to  each  other.4  But  where 
some  of  the  described  ingredients  may  be  dispensed  with, 
the  applicant,  if  he  states  that  fact  in  the  description,  may 
have  a  separate  claim  for  a  composition  of  matter  composed 
only  of  the  residue,  or  he  may  have  a  single  claim  covering 
the  indispensable  ingredients,  whether  with  or  without  the 
others.5 


1  Brush  Electric  Co.  v.  Ft.  Wayne  Williams  0.  Steam  Gauge  &  Lan- 
Electric  Light  Co.  40  Fed  Rep.  833,  tern  Co.  47  Fed.  Rep.  323,  1891. 
1889;  Brush  Electric  Co.  v.  West-  3  Prouty  «.  Ruggles,  16  Peters, 
tern  Electric  Co.  43  Fed.  Rep.  537,  336,  1843. 

1890;  Brush  Electric  Co.  ®.  Electric  4  Tyler  v.  Boston,  7  Wallace,  327, 

Imp.  Co.  52  Fed.  Rep.  975,  1892.  1868. 

2  Dudley  E.  Jones  Co.  v.  Hunger  6  Rubber  Co.  v.  Goodyear,  9  Wal- 
Mfg.    Co.  49  Fed.  Rep.  64,  1891;  lace,  788,  1869. 


102  APPLICATIONS.  [CHAP.  VI. 

§  120.  In  cases  where  the  description  relates  to  a  process, 
the  claim  should  cover  all  the  necessary  occurrences  in 
that  process,  and  cover  no  more.  If  it  covers  less  it  will  be 
void  for  want  of  utility  ;  and  if  it  covers  more,  it  can  be 
evaded  by  persons  who  omit  any  one  which  is  unnecesary, 
when  using  the  others. 

§  120a.  In  cases  where  the  description  and  its  accom- 
panying drawing  or  photograph  represent  a  design,  the 
claim  may  identify  its  subject  by  a  reference  to  that  draw- 
ing or  photograph.1  And  a  design  patent  may  contain  a 
claim  for  the  entire  design,  with  other  claims  for  such  of 
the  parts  of  the  design  as  are  independently  patentable.2 
But  several  unconnected  ornaments  cannot  lawfully  be 
aggregated  and  claimed  together  in  one  claim.3 

§  121.  The  signatures  of  the  applicant  and  of  the  wit- 
nesses must  embody  the  full  names  of  those  persons,  and 
must  be  legibly  written.4  The  grammatical  construction  of 
the  statutory  provisions,  relevant  to  signatures,  seems  to 
indicate  that  the  document  signed  by  the  applicant,  and  not 
the  signature  of  that  applicant,  is  the  thing  which  is  to  be 
attested  by  the  two  witnesses.  In  cases  where  language 
of  similar  character  has  been  used  in  statutes  which  pre- 
scribe the  mode  of  attesting  wills,  it  has  been  decided  to  be 
immaterial,  whether  the  witnesses  sign  before  or  sign  after 
the  execution  of  the  document ; 5  but  where  such  statutes 
have  provided  for  attesting  the  signatures  rather  than  the 
will,  it  is  the  law  that  the  document  is  void  if  the  witnesses 
sign  before  the  testator.6  It  is  the  practice  of  the  Patent 
Office  to  regard  the  attestation  as  being  attestation  of  the 
signatures,  and,  accordingly,  to  require  two  witnesses  for 
each  signature,  in  cases  of  joint  applications  for  joint 


1  Dobson  0.  Dornan,  118  U.  8. 14,  781, 1890. 

18S5.  4  patent  Office  Rule  40. 

2  Dobson  0.  Hartford  Carpet  Co.  6  O'Brien  v.  Gallagher,  25  Conn. 
114  U.  S.  446, 1885;  Britton0.  White  229,  1856. 

Manufacturing  Co.  61  Fed.  Rep.  95,  6  Wharton  on  Evidence,  Section 

1894.  888. 

3  Dukes  0.  Bauerle,  41  Fed,  Rep. 


CHAP.  VI.]  APPLICATIONS.  103 

inventions.  The  same  two  witnesses  may  indeed  attest  all 
the  signatures  ;  but  where  one  witness  attested  the  signature 
of  one  joint  inventor,  and  another  witness  attested  the  signa- 
ture of  the  other,  of  two  joint  inventors,  the  Patent  Office 
has  held  the  attestation  to  be  insufficient. 

§  122.  The  oath  is  not  required  by  the  statute  to  be  in 
writing,  nor  to  be  recorded.  It  may  be  taken  anywhere  in 
the  United  States,  before  any  person  authorized  by  law  to 
administer  oaths  at  that  place  ;  or,  when  the  applicant  re- 
sides in  a  foreign  country,  it  may  be  taken  before  any  min- 
ister, charge  d'affairs,  consul,  or  commercial  agent,  holding 
commission  under  the  government  of  the  United  States,  or 
before  any  notary  public  of  the  foreign  country  in  which 
the  applicant  may  be.1 

Recital  in  the  letters  patent,  that  the  required  oath  was 
made  by  the  applicant,  is,  in  the  absence  of  fraud,  conclu- 
sive evidence  of  that  fact.2  The  presence,  in  the  files  of 
the  Patent  Office,  of  a  paper  purporting  to  be  the  oath  in 
a  given  case,  but  void  for  lack  of  a  jurat,  or  for  some  other 
fault,  is  a  harmless  circumstance.3  In  such  a  case  the  law 
presumes  that  the  oath  recited  in  the  letters  patent  was 
made  orally,  or  was  embodied  in  some  other  paper.  It  is 
presumed  that  the  Commissioner  will  never  issue  a  patent 
till  he  is  satisfied  that  the  applicant  has  somehow  made 
oath  to  the  facts  to  which  the  statute  requires  him  to 
swear.  When  the  Commissioner  is  so  satisfied,  and  re- 
cites the  fact  in  the  letters  patent,  all  inquiry  on  the  sub- 
ject is  foreclosed,  except  in  cases  of  actual  fraud.  Rule  47 
of  the  Patent  Office  provides,  however,  that  the  oath  or 
affirmation  is  to  be  attested  in  all  cases  by  the  proper 
official  seal  of  the  officer  before  whom  it  is  taken.  That 
implies  that  the  Commissioner  requires  the  oath  to  be  put 
into  writing.  If,  however,  he  were  to  waive  that  require- 

1  Revised  Statutes,  Section  4892.      nolds,  14  Blatch.  506,  1878;  Hoe  v. 

2  Seymour  v.  Osborne,  11  Wai-      Kahler,   12  Fed.    Rep.    Ill,   1882; 
lace.  516,  1870.     .  Hancock  Inspirator  Co.  v.  Jenks, 

8  Crompton  v.   Belknap  Mills,  3      21  Fed.  Rep  914  1884. 
Fisher,  536,  1869:  DeFlorez  v.  Ray- 


104  APPLICATIONS.  [CHAP.  VI. 

ment  in  a  given  case,  and  were  to  content  himself  with  an 
oral  oath,  and  were  to  recite  in  the  patent  that  the  required 
oath  was  made,  the  law  would  still  have  been  complied 
with. 

§  123.  The  statute  requires  an  applicant  to  make  oath 
that  he  does  verily  believe  himself  to  be  the  first  intpentor 
of  the  invention  for  which  he  solicits  a  patent,  and  to  state 
of  what  country  he  is  a  citizen.1  The  Patent  Office  rules 
require  that  this  last  mentioned  statement  shall  also  be 
made  in  the  oath,  and  that  the  applicant  shall  also  state  in 
the  oath,  where  he  resides,  and  whether  the  invention  has 
been  patented  to  himself,  or  to  any  other  with  his  consent 
or  knowledge,  in  any  country,  and  if  it  has,  that  the  appli- 
cant shall  name,  under  oath,  such  foreign  country  or  coun- 
tries, and  shall  likewise  set  forth  the  number  and  date  of 
every  such  patent  granted  therein,  and  that,  according  to 
his  knowledge  and  belief,  the  same  has  not  been  in  public 
use  in  the  United  States  for  more  than  two  years  prior  to 
the  application  in  this  country.2 

The  statute  of  1836,  which  was  in  force  till  the  approval 
of  the  act  of  1870,  required  the  applicant  to  make  oath  or 
affirmation  of  what  country  he  was  a  citizen,3  whereas  the 
Act  of  1870,  and  the  Revised  Statutes,  require  only  his 
statement  on  that  subject.  The  old  law  governs  all  appli- 
cations made  before  July  8th,  1870 ;  and  under  it  Justice 
GEIER  decided  that  where  an  applicant  mentioned  a  wrong 
country  in  his  oath,  that  error  rendered  his  patent  void, 
even  though  it  arose  from  an  erroneous  opinion  relevant 
to  what  constituted  citizenship  of  the  United  States.4  But 
under  the  Statute  of  1870,  re-enacted  in  the  Revised  Stat- 
utes, such  an  error  does  not  invalidate  a  patent.5 

When  an  application  for  a  patent  is  made  by  an  executor 
or  administrator  of  a  deceased  inventor,  the  statute  directs 
the  oath  to  be  so  varied  in  form  that  it  can  be  made  by 

1  Revised  Statutes,  Section  4892.          4  Child  ».  Adams,  1  Fisher,  193, 

2  Patent  Office  Rules  46  and  39.          1854. 

3  5  Statutes  at  Large,    Ch.  357,          5  Tonduer  v.  Chambers,  37  Fed. 
Section  6,  p.  119.  Rep.  337,  1889. 


CHAP.  VI.]  APPLICATIONS.  105 

him.1  Whether,  in  such  a  case,  it  is  necessary  for  the  ap- 
plicant to  swear  that  he  believes  that  the  deceased  believed 
himself  to  be  the  first  inventor,  or  whether  it  is  necessary 
for  the  applicant  to  swear  that  he  believes  that  the  deceased 
was  in  fact  the  first  inventor  of  the  invention,  is  an  unsettled 
question.  If  the  first  is  the  true  view,  then  an  executor 
may  obtain,  without  perjury,  a  patent  for  an  invention 
which  he  may  know  to  have  been  previously  used  in  the 
United  States.  If  the  second  is  the  true  view,  then  an 
executor  may  be  unable  to  obtain,  without  perjury,  a  patent 
for  an  invention  never  before  known  or  used  in  this  country, 
and  not  previously  patented  or  described  in  any  printed 
publication,  in  this  or  in  any  foreign  country,  and  not 
known  or  believed  by  its  inventor,  to  have  been  previously 
known  or  used  anywhere  in  the  world.  In  the  first  of  these 
contingencies,  a  wrong  may  result  to  the  public,  and  in  the 
last,  a  wrong  may  result  to  the  beneficiaries  of  the  deceased. 

§  124.  An  affirmation  in  judicial  form  may  always  be  sub- 
stituted for  any  oath  required  by  any  United  Stated  statute.2 
Nor  is  this  rule  confined,  as  it  is  in  the  statutes  of  some  of 
the  States,  to  cases  where  the  affiant  informs  the  magistrate 
that  he  has  scruples  of  conscience  against  taking  an  oath. 

§  125.  The  Patent  Office  fee,  due  with  the  application  for 
a  patent  for  a  process,  machine,  manufacture,  or  composi- 
tion of  matter,  is  fifteen  dollars,  and  a  final  fee  of  twenty 
dollars  is  payable  after  such  a  patent  has  been  allowed  and 
before  it  is  issued.  The  fees  for  patents  for  designs,  vary 
with  the  length  of  the  terms  of  the  patents  applied  for. 
For  such  a  patent  for  three  years  and  six  months,  the  fee  is 
ten  dollars :  for  such  a  patent  for  seven  years,  the  fee  is 
fifteen  dollars  :  for  such  a  patent  for  fourteen  years,  the  fee 
is  thirty  dollars.3  Fees  for  design  patents  are  required  to 
be  paid  in  advance.4  The  final  fee,  above  mentioned,  must 
be  paid  within  six  months  after  the  patent  is  allowed,  and 
notice  thereof  is  sent  to  the  applicant  or  his  agent ;  and  if 


1  Revised  Statutes,  Section  4896.  8  Revised  Statutes,  Section  4934. 

2  Revised  Statutes,  Section  1.  *  Patent  Office  Rule  217. 


106  APPLICATIONS.  [CHAP.  VI. 

that  fee  is  not  paid  within  that  time,  the  statute  provides 
that  the  patent  shall  be  withheld.1  The  Commissioner  of 
Patents  has  no  jurisdiction  to  do  what  the  statute  forbids. 
Therefore  if  he  were  to  issue  a  patent  on  an  application, 
the  final  fee  for  which  was  not  paid  till  more  than  six 
months  after  the  patent  was  allowed,  he  would  be  acting 
without  authority,  and  the  patent  would,  for  that  reason,  be 
void.  At  common  law,  a  month  is  a  lunar,  not  a  calendar 
month.2  Many  of  the  States  have  reversed  this  definition 
by  statute,  and  though  Congress  has  never  done  so,  the 
Supreme  Court  of  the  United  States  has  reached  that  good 
result  by  judicial  interpretation  ;  and  the  word  "  month  " 
wherever  it  occurs  in  the  patent  laws,  must  now  be  taken 
to  mean  a  calendar  and  not  a  lunar  month.3 

§  126.  Drawings  are  required  by  the  statute  to  be  fur- 
nished by  applicants  for  patents,  in  all  cases  wherein  the 
invention  admits  of  representation  by  drawings.4  The  stat- 
utory requirement  relevant  to  the  character  of  such  draw- 
ings, is  merely  that  they  shall  be  signed  by  the  applicant 
or  by  his  attorney  in  fact,  and  shall  be  attested  by  two  wit- 
nesses. The  Patent  Office  rules  require,  in  addition,  that 
drawings  must  show  every  feature  of  the  invention  covered 
by  the  claims  ;  and  when  the  invention  consists  of  an  im- 
provement on  an  old  machine,  must  exhibit,  in  one  or  more 
views,  the  invention  itself,  disconnected  from  the  old  struc- 
ture, and  also,  in  another  view,  so  much  only  of  the  old 
structure  as  will  suffice  to  show  the  connection  of  the  in- 
vention therewith.5  Those  rules  also  describe  numerous 
other  characteristics  for  drawings.6  They  are  all  necessary 
to  the  systematic  and  proper  conduct  of  the  business  of  the 
office,  and  must  be  carefully  followed  in  order  to  secure 
favorable  action  from  the  Commissioner. 

To  be  as  useful  as  possible,  all  drawings  for  letters  patent 
ought  to  show  the  true  positions  and  proportions  of  the 

1  Revised  Statutes,  Section  4885.  *  Revised  Statutes,  Section  4889. 

2  Blackstone,  Book  2,  Ch.  9.  6  Patent  Office  Rule  50. 

3  Guaranty  Trust  Co.  v.  Railroad  «  Patent  Office  Rule  51. 
Co.  139  U.  S.  145,  1891. 


CHAP.  VI.]  APPLICATIONS.  107 

parts  of  the  inventions  which  they  purport  to  delineate  ; 
but  it  is  not  necessary  that  they  be  accurate  enough  to  be 
used  as  working  drawings,  from  which  to  construct  speci- 
mens of  those  inventions.1 

Drawings  in  applications  filed  prior  to  July  8, 1870,  and 
after  July  4,  1836,  were  required  to  have  "  written  refer- 
ences."2 The  object  of  such  references  was  to  connect  the 
various  parts  of  the  drawings  with  the  corresponding  parts 
of  the  specification  ;  but  it  was  a  sufficient  compliance  with 
that  statute,  where  those  references  were  made  on  the  draw- 
ings, though  not  made  in  the  specifications.3  The  present 
statute  says  nothing  about  any  references,  or  other  means 
of  connecting  drawings  with  specifications ;  but  the  Patent 
Office  rules  require  that  they  shall  be  connected  by  figures 
adjacent  to  the  different  views,  and  by  letters  or  figures  ad- 
jacent to  the  different  parts  of  the  drawings,  and  by  incor- 
porating those  figures  and  letters  in  the  descriptive  part  of 
the  specification.4 

§  127.  A  model  of  the  invention  is  required  by  the  statute 
to  be  furnished  by  the  applicant,  in  all  cases  wherein  the 
invention  admits  of  representation  by  model,  provided  the 
Commissioner  requires  a  model.5  This  proviso  was  not  in 
the  statute  of  1836,  but  it  was  inserted  in  that  of  1870,  in 
order  to  enable  the  Commissioner  to  dispense  with  models, 
in  all  cases  where  their  utility  is  inferior  in  value  to  their 
cost,  and  to  the  room  they  would  occupy  in  the  Patent 
Office.  Under  the  operation  of  the  proviso,  models  are  at 
present  called  for  by  the  Commissioner  in  very  few  of  the 
cases  which  admit  of  representation  thereby. 

§  128.  Specimens  of  compositions  of  matter,  and  of  the 
ingredients  thereof,  are  required  by  the  statute  to  be  fur- 
nished by  applicants  for  patents  for  such  compositions  of 
matter,  in  all  cases  where  the  Commissioner  calls  for  such 

1  American    Hide    and  Leather      Section  6,  p.  119. 

Splitting  Machine  Co.  v.  Machine  8  Emerson  v.  Hogg,  2  Blatch.  1, 

Co.  4  Fisher.  284,  1870;  Royer  v.  1845. 

Coupe,  29  Fed.  Rep.  369,  1886,  *  Patent  Office  Rules  38  and  51. 

2  5  Statutes  at  Large,  Ch.   357.  6  Revised  Statutes,  Section  4891. 


108  APPLICATIONS.  [CHAP.  VI. 

specimens.1  He  always  does  call  for  at  least  a  specimen  of 
the  composition,  put  up  in  proper  form  to  be  preserved, 
unless  that  composition  is  in  its  nature  perishable.3 

§  129.  An  application  for  a  patent  dates  from  its  filing  in 
the  Patent  Office,  and  not  from  the  day  of  its  execution  by 
the  applicant,  nor  from  the  clay  of  the  deposit  of  a  model  in 
the  Patent  Office,  nor  from  the  day  of  the  deposit  of  any- 
thing there  less  than  the  full  application  ;3  but  where  an 
application  is  divided  by  filing  a  new  one  for  part  of  its 
subject,  the  new  one  will  date  from  the  date  of  the  old  one.4 
In  the  absence  of  other  evidence,  the  date  of  the  application 
for  a  particular  patent,  is  taken  to  be  identical  with  the  date 
of  the  letters  patent  itself.5  Letters  patent,  and  printed 
certified  Patent  Office  copies  of  letters  patent,  not  old 
enough  to  have  expired,  always  have  upon  them,  in  the 
space  under  the  title,  a  memorandum  that  the  application 
therefor  was  filed  on  a  particular  specified  day.  But  no 
such  memorandum  is  evidence  of  the  fact  it  recites.  It  is 
not  evidence  at  common  law,  nor  in  pursuance  of  any  stat- 
ute. That  section  of  the  Revised  Statutes  6  which  gives 
evidential  character  to  certain  certified  copies,  does  not  in- 
clude any  such  memorandum,  because  it  is  no  part  of  the 
letters  patent  upon  which  it  is  placed,  and  because  it  is  not 
a  copy  of  any  record,  book,  paper,  or  drawing  belonging  to 
the  Patent  Office.  It  is  an  indication  of  what  some  such 
record,  book,  or  paper  appears  to  show,  but  it  is  not 
evidence  of  its  own  accuracy,  nor  is  it  covered  by  the  cer- 
tificate attached  to  the  document  upon  which  it  is  placed. 

§  130.  Those  transactions  which  constitute  an  original 
application  for  a  patent,  have  thus  far  constituted  the  sub- 
jects explained  in  this  chapter.  While  such  an  application  is 
pending  in  the  Patent  Office  ;  the  Commissioner  of  Patents 


1  Revised  Statutes.  Section  4890.  York,  35  Fed.  Rep.  504, 

-  Patent  Office  Rule  62.  4  Smith    &    Griggs  Mfg.    Co.  «. 

3  Draper  v.  Wattles,  3  Bann.  &  Sprague,  123  U.  S.  250,  1887. 

Ard.  618,  1878;  Henry  v.  Frances-          5  Worley  ®.  Tobacco  Co.  104  U. 

town  Soap-stone  Stove  Co.  5  Bann.  S.  342,  1881. 

&  Ard.  108,  1880;  Campbell «.  New          6  Revised  Statutes,  Section  892. 


CHAP.  VI.]  APPLICATIONS. 

has  no  authority  to  furnish  a  copy  of  any  -paper  which 
belongs  to  it,  to  any  one,  except  the  applicant,  or  his  attor- 
ney or  agent.  And  no  Patent  Office  official  has  any 
authority  to  give  to  any  person  any  information  about  any 
pending  application  ;  except  so  far  as  the  rules  of  the  Pat- 
ent Office  authorize  the  giving  of  certain  limited  information 
specified  therein,  to  those  who  make  or  who  represent  an 
interfering  application.1 

When  an  application  is  made  by  any  person,  it  becomes 
the  duty  of  the  Commissioner  to  cause  an  examination 
thereof,  and  of  the  invention  covered  thereby.  If  upon 
such  examination,  it  appears  that  the  applicant  is  justly 
entitled  to  a  patent  under  the  law,  it  is  the  duty  of  the 
Commissioner  to  issue  one  to  him  for  that  invention.2  The 
statute  does  not  prescribe  that  the  Commissioner  shall 
cause  this  examination  to  be  made  by  any  particular  sub- 
ordinate, and  he  may  overrule  the  decision  of  any  subordi- 
nate to  whom  he  may  have  committed  the  matter.3 

The  examination  may  extend  not  only  to  the  novelty  of 
the  invention  covered  by  the  application,  but  also  to  any 
other  question  of  fact,  upon  which  the  validity  of  the  pat- 
ent, if  granted,  may  be  expected  to  depend.  If  the  inves- 
tigation of  any  such  question  necessitates  the  taking  of 
testimony  by  the  Commissioner,  he  cannot  take  that  tes- 
timony in  the  form  of  ex-parte  affidavits,  but  must  take  it 
in  the  form  of  depositions,  made  upon  notice  to  the  appli- 
cant to  appear  and  cross-examine  the  deponents.4 

§  131.  Whenever,  after  an  examination,  any  application 
for  a  patent  is  rejected,  it  is  the  duty  of  the  Commissioner 
to  notify  the  applicant  thereof,  giving  him  the  reasons  for 
such  rejection,  together  with  such  information  and  refer- 
ences, as  may  be  useful  in  judging  of  the  propriety  of  pros- 
ecuting the  application,  or  of  altering  the  specification  ; 

1  United  States  v.  The  Commis-  3  Hull  v.  Commissioner  of  Pat- 
sioner  of  Patents,  54  Off.  Gaz.  267,  ents,  7  Off.  Gaz.  559.  1875;  8  Off. 
1890.  Gaz.  46,  1875. 

2  Revised  Statutes,  Sections  4893.  4  Alteneck's  Appeal,  23  Off.  Gaz. 
4886.  269,  1882. 


110  APPLICATIONS.  [CHAP.  VI. 

and  if,  after  receiving  such  a  notice,  the  applicant  persists 
in  his  request  for  a  patent,  with  or  without  altering  his 
specification,  it  thereupon  becomes  the  duty  of  the  Commis- 
sioner to  cause  a  re-examination  of  the  case.1 

§  132.  If,  without  amending  his  specification,  the  appli- 
cant persists  in  his  request  for  a  patent,  and  if  the  appli- 
cation is  again  rejected  by  the  primary  examiner,  to  whom 
the  Commissioner  referred  the  case,  then  the  applicant  may 
appeal  to  the  board  of  examiners-in-chief  ;2  and  if  unsuc- 
cessful there,  he  may  appeal  to  the  Commissioner.3  Such 
an  appeal  may  be  heard  by  the  Commissioner,  or  by  the 
Assistant  Commissioner.  If  heard  by  the  latter,  no  appeal 
lies  to  the  former,  and  no  decision  of  either  can  be  re- 
opened or  set  aside  by  any  successor,  except  for  fraud, 
clerical  error  apparent  on  the  face  of  the  record,  or  newly 
discovered  evidence,  presented  under  circumstances  which 
would  justify  a  new  trial  in  an  action  at  law.4  If  the  Com- 
missioner or  Assistant  Commissioner  refuses  to  grant  him 
a  patent,  the  applicant  may  appeal  to  the  Court  of  Appeals 
of  the  District  of  Columbia,5  but  not  to  the  Secretary  of 
the  Interior ;  6  and  if  the  Commissioner  refuses  to  allow 
that  appeal,  he  may  be  compelled  to  do  so,  by  a  writ  of 
mandamus,  granted  by  the  latter  tribunal,  upon  the  petition 
of  the  applicant.7  No  appeal  lies  to  that  court  from  a 
rejection  of  an  amendment ;  but  only  from  rejections  of 
specifications  as  originally  filed,  or  as  amended  by  leave 
of  the  Patent  Office.8 

And  all  appeals  must  be  heard  on  the  case  as  submitted 
to  the  primary  examiner.9  No  appeal,  therefore,  should  be 

1  Revised  Statutes,  Section  4903;      Section  780. 

Patent  Office  Rule  65.  6  Butterworth  v.  Hoe,  112  U.  S. 

2  Revised  Statutes,  Section  4909.  50,  1884. 

3  Revised  Statutes,  Section  4910.  7  Commissioner    of    Patents    ». 
*  In  re  Hoeveler  &  McTighe,  21  Whiteley,  4  Wallace,  533,  1866. 

D.  C.  R.  107.  1892  8  jn  re  Chinnock,  21  D.  C.   R. 

s  27  .Statutes  at  Large,  Ch.  74,  594,  1893. 

Section  9,  p.  436;  Revised  Statutes,  9  Hammond's  Appeal,  2  Off.  Gaz. 

Section  4911;  Revised  Statutes  re-  57,1872. 
lating  to  the  District  of  Columbia, 


CHAP.  VI.]  APPLICATIONS.  Ill 

taken  until  the  application  is  in  such  a  condition  that  the 
patent  will  issue,  if  the  decision  of  the  primary  examiner 
is  reversed.1  If  that  decision  is  reversed  by  the  board  of 
examiners-in-chief,  the  primary  examiner  can  require  no 
amendment,8  but  must  pass  the  case  for  issue.  If  the  board 
affirms  the  decision  of  the  primary  examiner,  the  Commis- 
sioner will  not  reverse  the  board  on  any  question  of  fact, 
unless  its  decision  was  clearly  against  the  weight  of  evi- 
dence.3 If  the  Commissioner  affirms  the  decision  of  the 
board,  because  the  patent  ought  not,  in  his  judgment  to 
issue,  he  need  assign  but  one  reason  for  that  opinion.  The 
applicant  cannot  demand  of  him  that  he  pass  upon  any 
other  question.4  And  the  Commissioner  may  at  any  time 
before  the  issue  of  a  patent,  reverse  his  own  or  any  other 
favorable  Patent  Office  action  thereon,5  except  that  of  a 
predecessor  of  himself,  or  of  a  predecessor  of  the  Assistant 
Commissioner,6  and  may  thereupon  reject  the  application. 

And  any  party  aggrieved  by  a  decision  of  the  Commis- 
sioner of  Patents,  in  any  interference  case,  may  appeal 
therefrom  to  the  Court  of  Appeals  of  the  District  of 
Columbia.7  But  such  an  appeal  is  confined  to  the  final 
decision  of  the  Commissioner,  on  the  question  of  priority 
only.8  And  that  decision  cannot  award  costs  to  the  suc- 
cessful party.9 

§  133.  Where  an  appeal  is  taken  to  the  Court  of  Appeals 
of  the  District  of  Columbia,  the  applicant  is  required  to 
give  notice  thereof  to  the  Commissioner,  and  to  file  in  the 
Patent  Office,  within  such  time  as  the  Commissioner  shall 
appoint,  his  reasons  for  the  appeal,  specifically  set  forth  in 
writing.10 

1  Mewes'  Appeal,  2  Off.  Gaz.  617,          6  In  re  Hoeveler  &  McTighe,  21 
1872.  D.  C.  R  107,  1892. 

2  Brunner's  Appeal,  1  Off.  Gaz.          7  27  Statutes  at  Large,  Ch.   74, 
303, 1872.  Section  9,  p.  436. 

3  Hazellp  v.  Richardson,  10  Off.          8  Westinghouse   «.   Duncan,    66 
Gaz.  747,  1876.  Off.  Gaz.   1010.   1894;  Hisey  v.  Pe- 

4  Commissioner   of    Patents    v.      ters,  71  Off.  Gaz.  893,  1895. 
Whiteley,  4  Wallace,  532,  1866.  »  Wells  v.  Reynolds,  69  Off.  Gaz. 

5  United  States  t>.   Butterworth,      1507,  1894. 

3  Mackey,  233,  1884.  10  Revised  Statutes.  Section  4912. 


112  APPLICATIONS.  [CHAP.  VI. 

The  court  before  hearing  the  appeal,  gives  notice  to  the 
Commissioner  of  the  time  and  place  thereof,  and  the  Com- 
missioner is  required,  thereupon,  to  give  like  notice  to  all 
persons  who  appear  to  be  interested  in  the  case.  The  ap- 
plicant is  required  to  lay  before  the  court,  at  the  hearing, 
certified  copies  of  all  the  papers  in  the  case,  and  the  Com- 
missioner is  required  to  furnish  the  court  with  a  full  written 
statement  of  the  grounds  of  his  decision  ;  and  at  the  request 
of  any  party  interested,  or  of  the  court,  the  Commissioner 
and  the  examiners  may  be  examined  under  oath,  in  explana- 
tion of  the  principles  of  the  thing  for  which  a  patent  is 
demanded.1 

None  of  the  papers  which  go  from  the  applicant,  or  from 
the  Commissioner,  to  the  court  on  an  appeal,  are  kept  secret 
in  the  court ; 2  though  the  papers  of  which  they  are  copies, 
and  all  the  other  papers  in  the  case,  are  kept  concealed 
from  the  public  in  the  Patent  Office,  until  the  case  is  finally 
disposed  of  there,  after  the  court  has  rendered  its  decision. 

The  court  hears  the  case  in  a  summary  way,  on  the  evi- 
dence produced  before  the  Commissioner,  and  confines  its 
revision  of  the  Commissioner's  decision,  to  the  points  set 
forth  in  the  applicant's  reasons  of  appeal.  Having  decided 
the  questions  involved,  the  court  gives  the  Commissioner 
a  certificate  of  its  proceedings  and  decisions,  which,  being 
entered  of  record  in  the  Patent  Office,  governs  the  further 
proceedings  in  the  case.  No  such  decision,  however,  pre- 
cludes any  person  from  contesting  the  validity  of  any  patent 
issued  in  pursuance  thereof,  in  any  court  wherein  that 
validity  may  be  called  in  question.3  And  no  such  decision, 
if  adverse  to  the  applicant,  deprives  the  Commissioner  of 
jurisdiction  to  grant  a  patent  for  the  same  invention,  on  a 
later  and  proper  application  of  the  same  inventor.4 

§  134.  Whenever  a  patent  is  refused  by  the  Commissioner 
of  Patents,  or  by  the  Court  of  Appeals  of  the  District  of 

1  Revised  Statutes,  Section  4913.  Fry   «.  Quinlan,    13   Blatoh.   205, 

.2  In  re  Drawbaugh,  66  Off.  Gaz.  1875. 

1451,  1894.  4  United    States   v.   Colgate,  32 

8  Revised  Statutes,  Section  4914;  Fed.  Rep.  624,  1884. 


CHAP.  VI.]  APPLICATIONS.  113 

Columbia,  on  appeal  from  the  Commissioner,  the  applicant 
may  file  a  bill  in  equity  in  any  United  States  Court  having 
or  acqiiiring  jurisdiction  of  the  parties.1  The  only  way  in 
which  any  United  States  Circuit  Court  can  acquire  jurisdic- 
tion of  the  Commissioner,  is  by  his  voluntary  appearance 
therein  and  submission  thereto,2  but  the  Supreme  Court  of 
the  District  of  Columbia  has  jurisdiction  over  him,  for  the 
purposes  of  this  law,  by  virtue  of  his  official  residence  in 
Washington,  in  that  District.3  The  complainant  in  such 
a  bill  may  be  the  inventor-applicant,  or,  in  case  of  an  assign- 
ment of  the  invention,  he  may  be  the  assignee,  because  the 
latter  is  considered  to  be  an  applicant  within  the  meaning 
of  the  law  on  this  subject.4  If  there  is  no  opposing  party, 
a  copy  of  the  bill  is  required  to  be  served  on  the  Commis- 
sioner ;  but  the  Secretary  of  the  Interior  is  not  a  proper 
party  to  such  a  bill.5  And  the  Commissioner  is  not  a  proper 
party,6  where  there  is  a  party  whose  interests  are  those 
which  are  adverse  to  the  interests  of  the  complainant ; 7  and 
in  that  case  the  bill  may  be  filed  in  the  Circuit  Court  of  the 
United  States  for  the  judicial  district  or  division  wherein 
that  party  is  an  inhabitant ;  or  in  the  Supreme  Court  of  the 
District  of  Columbia,  if  that  party  is  an  inhabitant  of  that 
District.8 

Where  either  class  of  these  conditions  are  fulfilled,  the 
court  has  jurisdiction  to  adjudge  that  the  applicant  is  entitled 
to  receive  a  patent  for  his  invention,  as  specified  in  his 
final  claims,  or  any  part  thereof,  as  the  facts  in  the  case 
may  appear  to  be,  but  not  as  specified  in  any  claim  which 
the  applicant  relinquished  in  the  Patent  Office,  or  in  any 
new  claim  which  he  never  presented  there.9  And  such  an 

1  Revised  Statutes,  Section  4915      ents,  87  Off.  Gaz.  451,  1886.. 

and  Section  629,  *[f  9.  6  Mergenthaler  Co.  v.  Seymour, 

2  Illingworth  v.   Atha,   42  Fed.      66  Off.  Gaz.  1311,  1894. 

Rep.  144,  1890.  7  Graham  v.  Teter,  25  Fed.  Rep. 

3  Butterworth  v.  Hill,  114  U.  S.      555,  1885. 

129,  1885.  8  34  statutes  at  Large,  Ch.  373,  p. 

4  Gay  v.  Cornell.   1   Blatch.   508,      552. 

1849.  'Durham  v.  Seymour,    71    OS. 

6  Kirk  v.  Commissioner  of  Pat-      Gaz.  601,  1895. 


114  APPLICATIONS.  [CHAP.  VI. 

adjudication,  if  made,  authorizes  the  Commissioner  to  issue 
such  a  patent,  on  the  applicant's  filing  in  the  Patent  Office 
a  copy  of  the  adjudication,  and  otherwise  complying  with 
the  requirements  of  the  law  ;l  and  it  then  becomes  the  duty 
of  the  Commissioner  to  issue  the  patent.2  But  no  court  has 
any  jurisdiction  to  restrain  the  Commissioner  from  issuing 
a  patent  to  the  defendant,  in  any  such  case  as  those  treated 
in  this  section.3 

In  order  to  decide  the  issues  of  such  a  bill  in  equity  as  is 
treated  in  this  section,  the 'court  where  the  bill  is  pending 
will  take  testimony,  and  any  other  admissible  evidence,  ac- 
cording to  the  course  of  courts  of  equity;  and  will  also  con- 
sider whatever  was  before  the  Patent  Office  in  the  proceed- 
ings which  resulted  in  the  refusal  to  grant  a  patent;  and,  if 
the  case  has  been  before  the  Court  of  Appeals  of  the  Dis- 
trict of  Columbia,  will  also  consider  the  proceedings  which 
took  place  in  that  tribunal.4  The  burden  is  on  the  complainant 
to  prove  the  truth  of  his  bill,  by  evidence  that  is  clear  and 
conclusive.5  The  litigation  explained  in  this  section  is 
therefore  original,  and  not  appellate  litigation.  But  it  may 
not  be  resorted  to  as  a  concurrent  remedy  with  an  appeal 
to  the  Court  of  Appeals  of  the  District  of  Columbia  in  any 
case  where  such  an  appeal  lies ;  because,  where  that  remedy 
exists,  it  must  be  exhausted  before  the  ultimate  redress  of 
a  bill  in  equity  can  be  invoked.6 

Where  the  Commissioner  withholds  a  patent  by  virtue  of 
his  general  supervisory  authority,  the  remedy  now  under 
consideration  is  the  only  one  to  which  the  applicant  can 
resort,  for  no  appeal  lies  to  the  Court  of  Appeals  of  the 
District  of  Columbia,  nor  can  any  writ  of  mandamus  be 


1  Revised  Statutes,  Section  4915.  *  Butterworth  ».  Hoe,  112  U.  8. 

2  Butterworth  v.   Hoe,  112  U.  S.  61,  1884;  Gandy  v.   Marble,  122  U. 
62,  1884;  Vermont  Farm  Machine  S.  439,  1886. 

Co.   v.   Marble,   20  Fed.  Rep.  118,  6  Durham    «.    Seymour,  71    Off. 

1884.  Gaz.  604,  1895. 

3  Whipple  v.  Miner,  15  Fed.  Rep.  e  Kirk  v.  Commissioner  of  Pat- 
117,  1883;  Illingworth  v.   Atha.  42  ents,  37  Off.  Gaz.  451,  1886. 

Fed.  Rep.  141,  1890. 


CHAP.  VI.]  APPLICATIONS.  115 

granted  by  that  tribunal,  to  compel  the  Commissioner  to 
issue  a  patent  in  such  a  case.1 

Where  a  patent  is  refused  because  of  an  adverse  decision 
of  an  interference,  and  where  an  applicant  files  a  bill  in 
equity  to  procure  a  patent,  on  the  ground  that  the  decision 
of  the  question  of  priority  in  the  interference  was  wrong  ; 
the  court  will  dismiss  the  bill  if  it  finds  the  alleged  inven- 
tion to  have  been  not  patentable  to  either  of  the  parties  in 
the  interference,  regardless  of  any  question  of  priority 
between  those  parties.2 

The  remedy  delineated  in  this  section  must  be  invoked 
within  two  years  after  the  last  official  action  on  the  applica- 
tion ;  unless  the  complainant  satisfies  the  court  in  which  it 
is  invoked,  that  the  longer  delay  was  unavoidable.3 

§  135.  The  right  to  amend  applications  for  patents  is  one 
of  great  value  and  frequent  exercise,  but  it  has  never  been 
expressly  established  by  any  statute.  No  statute  prior  to 
that  of  1836  even  mentioned  the  subject,  and  that  statute 
only  provided  that  whenever  it  appeared  to  the  Commis- 
sioner, that  one  or  more  of  the  claims  of  an  application 
were  inadmissible  for  want  of  novelty,  or  that  the  descrip- 
tion was  defective  and  insufficient,  he  should  notify  the  ap- 
plicant thereof,  and  should  furnish  him  with  such  informa- 
tion as  might  be  useful  in  judging  of  the  propriety  of  altering 
his  specification,  so  as  to  exclude  that  part  of  the  subject- 
matter  found  not  to  be  new.4  No  change  relevant  to  this 
point  was  made  in  the  statute  till  1870,  when,  in  the  place 
of  the  foregoing  provision,  it  was  enacted  that  whenever  any 
claim  was  rejected,  for  any  reason  whatever,  the  Commis- 
sioner should  notify  the  applicant  thereof,  and  should 
furnish  him  with  such  information  as  might  be  useful  in 
judging  of  the  propriety  of  altering  his  specification.5  The 


1  Hull  v.  Commissioner  of  Patents,  1886. 

7  Off.  Gaz.  559,  1875;  8  Off.  Gaz.  46,  *  5  statutes  at  Large,  Ch.  357,  Sec- 

1875.  tion  7,  p.  120. 

2  Hill  v.  Wooster,  182  U.  S.  693'  8  16  Statutes  at  Large,  Ch.  230, 
1890.  Section,  41,  p.  204. 

3  Gandy  v.  Marble,  122  U.  S.  439, 


116  APPLICATIONS.  [CHAP.  VI. 

present  statute  on  the  subject  is  substantially  identical  with 
that  of  1870.1 

There  is  no  apparent  material  difference,  at  this  point, 
between  any  of  the  three  statutes,  unless  the  provision  in 
that  of  1836,  relevant  to  the  nature  of  the  amendment  con- 
templated by  that  section,  constitutes  a  limitation  not  found 
in  either  of  the  others.  The  two  later  statutes  provide  that 
the  Commissioner  shall  furnish  the  applicant  with  such 
information  as  may  be  useful  in  judging  of  the  propriety  of 
altering  his  specification.  The  earlier  statute  adds  to  that 
provision  the  words :  "to  embrace  only  that  part  of  the 
invention  or  discovery  which  is  new."  All  three  of  the  stat- 
utes recognize  the  right  of  an  applicant  to  alter  his  speci- 
fication, after  rejection  of  any  claim  therein.  They  differ 
from  each  other  only  in  regard  to  the  kind  of  information 
which  they  require  the  Commissioner  to  furnish  the  appli- 
cant, to  guide  him  in  the  exercise  of  that  right.  Neither  of 
them  furnishes  the  foundation  of  that  right,  nor  limits  that 
right  to  cases  where  the  application  has  been  rejected. 
They  all  provide  a  proceeding  for  such  cases,  but  neither  of 
them  negatives  the  existence  of  such  a  right  in  other  cases. 

§  136.  The  real  foundation  of  the  right  to  amend  appli- 
cations for  patents,  is  found  in  Section  4888  of  the  Revised 
Statutes,  a  section  substantially  identical  with  Section  26 
of  the  Patent  Act  of  1870,  and  with  the  second  sentence  of. 
Section  6  of  the  Patent  Act  of  1836,  and  with  the  middle 
part  of  Section  3  of  the  Patent  Act  of  1793.  Ever  since 
1793,  one  or  another  of  these  four  enactments  has  been  in 
force,  and  has  provided,  in  substance,  that  before  any  in- 
ventor shall  receive  a  patent  for  his  invention,  he  shall  file 
in  the  Patent  Office  a  full,  clear,  and  exact  written  descrip- 
tion of  that  invention.  Ever  since  1836,  one  or  another 
of  the  three  statutes  first  mentioned  has  been  in  force, 
and  has  additionally  provided  that  before  any  inventor 
shall  receive  a  patent,  he  shall  particularly  point  out  and 
claim  the  part  or  combination  which  he  claims  as  his 

1  Revised  Statutes,  Section  4903. 


CHAP.  VI.]  APPLICATIONS.  117 

invention.  Now  when  a  statute  enacts  that  a  thing  shall  be 
done  before  a  particular  event  can  occur,  it  implies  that  it 
can  be  done  prior  to  such  an  event.  An  inventor  may 
therefore  do  those  things  before  he  receives  a  patent.  If  he 
fails  in  his  first  attempt  to  furnish  a  proper  and  adequate 
description,  or  to  furnish  proper  and  adequate  claims,  he 
may  try  again,  and,  if  necessary,  still  again  and  again.  If 
he  finally  succeeds  in  both,  the  Commissioner  acquires 
jurisdiction  to  grant  him  a  patent,  provided  all  the  other 
requirements  of  the  law  are  also  complied  with.  The  stat- 
ute does  not  attend  to  the  details  of  this  matter.  It  only 
provides  that  at  some  time  before  a  patent  is  issued,  a  proper 
description  and  a  proper  claim  shall  be  filed  in  the  Patent 
Office.  To  what  extent  these  things  must  be  done  at  first, 
and  to  what  extent  and  under  what  circumstances  they  may 
be  done  by  way  of  amendment  of  the  original  papers,  are 
questions  which  are  to  be  determined  in  the  light  of  the  de- 
cisions of  the  courts,  made  under  general  judicial  authority; 
and  of  the  rules  of  the  Patent  Office,  made  under  Section  483 
of  the  Revised  Statutes.  To  ascertain,  therefore,  what  may 
and  what  may  not  be  done  by  way  of  amendments  of  appli- 
cations, the  true  recourse  is  to  those  decisions  and  those 
rules. 

§  137.  The  applicant  may  amend  before  or  after  the  first 
rejection,  and  he  may  amend  as  often  as  the  examiner  pre- 
sents any  new  references  or  reasons  for  rejection;  but  after 
such  action  on  all  the  claims  as  entitles  the  applicant  to  an 
appeal  to  the  board  of  examiners-in-chief,  no  amendment  is 
allowed,  unless  the  applicant  convinces  the  examiner  or  the 
Commissioner,  that  there  was  a  sufficient  excuse  for  the  de- 
lay in  presenting  it.1  Amendments  not  affecting  the  merits 
may  be  made  after  the  patent  is  allowed,  and  even  after 
the  final  fee  is  paid,  provided  those  amendments  are 
approved  first  by  the  examiner,  and  then  by  the  Commis- 
sioner.2 


1  Patent  Office  Rule  68.  2  Patent  Office  Rule  78. 


118  APPLICATIONS.  [CHAP.  VI. 

§  138.  It  was  formerly  held,  that  whenever  an  inventor 
files  an  application  for  a  patent,  he  was  regarded  as  apply- 
ing for  such  a  patent  as  would  cover  every  patentable  thing 
represented  in  the  specification,  drawing  or  model  of  that 
application.1  If,  therefore,  his  claims  as  first  submitted  to 
the  Commissioner  did  not  cover  every  such  thing,  he  was 
allowed  to  amend  them  to  whatever  extent  was  necessary  to 
make  them  do  so,  or  he  was  allowed  to  add  other  claims  to 
accomplish  that  purpose.  But  the  law  of  the  subject  has 
more  lately  been  laid  down  on  stricter  lines,  though  those 
lines  have  not  yet  been  accurately  delineated,  in  all  their 
parts,  in  the  decisions. 

The  general  rule  is  that  no  amended  or  new  claim  can  be 
allowed,  unless  it  is  for  the  "  same  invention  "  as  the  origi- 
nal application.2  It  has  been  decided  that  this  quoted 
phrase  is  not  confined  in  its  meaning  to  whatever  invention 
was  actually  claimed  by  the  inventor  in  his  original  appli- 
cation, and  that  claims  may  be  broadened,  while  applica- 
tions are  pending.3  And  it  has  also  been  decided,  that 
a  drawing  may  be  amended  in  the  light  of  the  specification, 
even  to  the  extent  of  inserting  in  it,  the  distinguishing 
characteristic  of  the  invention,  when  that  was  accidentally 
omitted  from  the  original  drawing.4  But  it  has  not  been 
decided  whether  "  the  same  invention "  refers  to  whatever 
invention  was  described,  indicated,  or  shown  in  the  appli- 
cant's original  specification,  drawing,  or  model ;  or  refers  to 
whatever  invention  was  described  or  indicated  in  the  origi- 
nal specification  or  drawing ;  or  refers  to  whatever  inven- 
tion was  described  in  the  original  specification  ;  or  refers  to 
whatever  invention  was  described  in  the  original  specification, 
and  appeared  therein  to  have  been  intended  to  be  secured  by 


1  Singer  v.  Braunsdorf,  7  Blatch.  R.    R.    Co.   v.   Car-Heating  Co.  67 
532,  1870.  Fed.  Rep.  126,  1895. 

2  Railway  Co.  v.  Sayles,  97  U.  8.  3  Rocker  Spring  Co.  v.  Thomas, 
554,    1878;     Eagleton  Mfg.    Co.   v.  68  Fed   Rep.  200,  1895. 

West  Mfg.  Co.  Ill  U.  S.  490,  1884;  4  Consolidated  Brake  Shoe  Co.  v. 

Beach  v.  Box  Machine  Co.  63  Fed.  Detroit  S.  &  8.  Co.  59  Fed.  Rep. 

Rep.  604,   1894;  Michigan  Central  903,  1894. 


CHAP.  VI.]  APPLICATIONS.  119 

the  original  application.  The  latter  signification  of  the 
phrase,  is  that  which  the  same  phrase  has  been  finally  de- 
cided to  bear  in  the  law  of  reissues.1  But  there  are  reasons 
why  a  more  liberal  meaning  should  be  ascribed  to  it  in  the 
law  of  amendments  of  applications  ;  and  it  is  therefore  prob- 
able that  the  courts  will  finally  establish  one  or  another  of 
the  more  liberal  significations,  as  being  the  true  meaning  of 
the  phrase  in  the  latter  law. 

An  amendment  which  does  not  add  or  broaden  any  claim, 
may  be  made  by  the  attorney  of  the  applicant,  even  after 
the  death  of  the  latter  ;2  but  in  case  the  applicant  seeks,  by 
amendment,  to  introduce  any  claim  not  substantially  em- 
braced in  the  statement  of  invention  or  any  claim  originally 
presented,  he  is  required  to  file  a  supplemental  oath  that  the 
subject  of  the  proposed  amendment, was  part  of  his  invention, 
and  was  invented  before  he  filed  his  original  application.3 

§  139.  An  applicant  must  amend  his  specification,  when- 
ever such  amendment  is  required  to  correct  inaccuracy  or 
unnecessary  prolixity  therein,  or  to  secure  correspondence 
between  the  claim  and  the  other  parts  of  the  specification.4 
So  also,  unless  the  original  drawings  and  model  conform  to 
certain  standards  of  artistic  and  mechanical  excellence  set 
forth  in  the  rules,  the  applicant  must  furnish  amended 
drawings  and  an  amended  model  which  do  conform  to  those 
requirements.5 

§  140.  An  interference  is  a  proceeding  carried  on  in  the 
Patent  Office,  for  the  purpose  of  determining  the  question 
of  priority  between  two  or  more  parties,  each  of  which  is 
seeking  a  patent  for  the  same  invention  ;  or  between  two  or 
more  parties,  at  least  one  of  which  is  seeking  a  patent  for 
an  invention  already  covered  by  a  patent  which  has  not  yet 
expired.6  The  proceedings  in  interferences  are  governed  by 

1  Section  233  of  this  book.  «  Rerised  Statutes,  Section  4904; 

2  De  La  Vergne  Machine  Co.  v.  Patent    Office    Rule    93;     United 
Featherstone,  147  U.  S.  229,  1893.  States  v.  Commissioner  of  Patents, 

3  Patent  Office  Rule  48.  7  Off.   Gaz.   603,   1875;     Hisey    t. 

4  Patent  Office  Rule  71.  Peters,  71  Off.  Gaz.  893,  1895. 
6  Patent  Office  Rules  49  to  59. 


120  APPLICATIONS.  [CHAP.  VI. 

an  elaborate  code  of  Patent  Office  rules,  which  are  as  bind- 
ing as  the  law  itself,1  and  to  which  the  practitioner,  in  such 
cases,  will  necessarily  resort  for  detailed  information.2  It 
is  unnecessary  to  explain  those  rules  in  this  text-book,  but 
it  is  expedient  to  set  down  in  this  connection  the  relevant 
rules  of  law,  which  rest  directly  upon  the  statutes  and  de- 
cisions for  their  sanction. 

§  141.  There  is  no  limit  to  the  number  of  interferences  to 
which  an  application  may  be  subjected ;  and  if  a  patent  is 
issued  without  going  through  every  such  proceeding,  pre- 
viously ordered  by  the  Commissioner,  that  patent  will  be 
void.3  The  ordinary  rules  of  evidence  which  are  applied  in 
United  States  courts  are  used  in  interference  cases.4  This 
includes  the  rules  which  relate  to  dispensing  with  evidence 
of  facts  of  public  notoriety.5  The  doctrines  of  estoppel  also 
apply  in  these  contests,  in  the  same  manner  in  which  they 
apply  in  other  litigious  proceedings.6 

But  a  witness  who  is  not  a  party  to  the  interference,  is 
protected,  by  a  statute,  from  being  compelled  to  disclose  any 
secret  invention  made  or  owned  by  himself  ;7  but  that  stat- 
ute does  not  allow  a  party  to  an  interference  to  refuse  to 
answer  any  question  relevant  to  the  invention  in  interfer- 
ence.8 

In  deciding  an  interference,  priority  is  awarded  to  the 
party  who  first  conceived  the  invention,  provided  he  used 
due  diligence  in  reducing  it  to  practice,  or  in  applying 
for  a  patent  thereon  ;  but  if  laches  intervened  between  his 
conception  on  the  one  hand,  and  his  reduction  to  practice, 
or  his  application  for  a  patent,  on  the  other  hand  ;  then 
priority  is  awarded  to  the  party  who  first  reduced  the 

1  Arnold  v.  Bishop,  1  McArthur's      404,  1876. 

Patent    Cases,    31,    1841;     United  5  Anson  v.   Woodbury,     12    Off. 

States   v.  'Marble,    2   Mackey,  12  Gaz.  1,  1877. 

1882.  6  Berry  v.  Stockwell,  9  Off.  Gaz. 

2  Patent  Office  Rules  93  to  132,  404,  1876. 

and  146  and  147.  7  Revised  Statutes,  Section  4908. 

8  Potter  v.  Dixon,  2  Fisher,  381,  8  Dorman  v.  Keefer,  49  Fed.  Rep. 

1863.  462,  1892. 

4  Berry  v.  Stockwell,  9  Off.  Gaz. 


CHAP.  VI.]  APPLICATIONS.  121 

invention  to  practice,  or  applied  for  a  patent,  as  the  case 
may  be.1 

§  142.  No  decision  of  the  Commissioner,  in  any  interfer- 
ence case,  is  pleadable  as  resjudicata  in  any  action  in  any 
court  ;2  but  such  a  decision  will  be  followed  by  the  courts, 
unless  it  is  shown  to  be  wrong,  by  evidence  which  puts  the 
point  beyond  a  reasonable  doubt.3  Where  such  a  decision 
is  made  between  two  or  more  applications,  a  patent  is 
granted  to  the  inventor  decided  to  be  first,  and  no  patent  is 
granted  to  either  of  the  others.  If  it  is  made  between  an  ap- 
plication and  a  patent,  and  is  made  in  favor  of  the  applica- 
tion, the  Commissioner  will  grant  a  patent  thereon,  but  he 
cannot  recall  the  patent  already  issued.  In  such  a  case, 
the  rival  inventors  may  litigate  their  interference  contro- 
versy anew,  on  the  equity  side  of  any  United  States  Circuit 
Court  which  has  or  can  acquire  jurisdiction  of  the  parties.4 
That  kind  of  litigation  constitutes  the  subject  of  the  chapter 
on  interfering  patents  ;  the  thirteenth  chapter  of  this  book. 
Or  the  question  of  priority  between  the  two  inventors  may 
be  litigated  afresh  in  any  infringement  suit,  brought  by  one 
of  them  against  the  other.  If,  in  such  a  case  as  that  under 
present  consideration,  it  had  happened  that  the  successful 
applicant  had  filed  his  application  before  the  interfering 
patent  was  granted,  that  patent  would  not  have  been  granted 
at  all,  unless  the  Patent  Office  decision  on  the  interference 
had  been  reversed  by  some  higher  authority.  In  that  event, 
the  successful  applicant  would  not  have  been  liable  to  any 
interference  suit,  nor  any  infringement  suit,  brought  against 
him  by  his  rival ;  for  his  rival  would,  in  that  event  have  no 
patent  upon  which  to  base  a  suit  of  either  of  those  kinds.- 


1  Reed  v.   Cutter,   1   Story,  598,  19  Fed.  Rep.  427,   1884;  Hubel  ». 
1841;    McCormick    Mach.     Co.    v.  Tucker,   24  Fed.   Rep.   701,  1885; 
Minneapolis  Harvester  Works,  42  Kirk  v.  DuBois,  33  Fed.  Rep.  252, 
Fed.  Rep.  154,  1890;  Burr  v.  Ford,  1887. 

70  Off.  Gaz.  275,  1894.  »  Morgan  v.  Daniells,  153  U.  S. 

2  Union  Paper  Bag  Machine  Co.  123,  1894;  Hisey  v.  Peters,  71  Off. 
v.  Crane,  1  Bann  &  Ard.  494,  1874;  Gaz.  894,  1895. 

Gloucester  Isinglass  Co.  v.  Brooks,  4  Revised  Statutes,  Section  4918. 


122  APPLICATIONS.  [CHAP.  vi. 

For  this  reason,  as  well  as  for  others,  every  inventor  who 
desires  to  secure  a  patent  for  an  invention,  should  make  his 
application  therefor  soon  after  making  that  invention.  If, 
however,  that  invention  requires  time  in  reaching  maturity, 
the  inventor  may  prevent  the  issuing  of  any  interfering 
patent  in  the  meantime,  by  filing  a  caveat  in  the  Patent 
Office. 

§  143.  A  caveat  is  a  document  in  which  an  inventor  states 
the  function,  and  the  distinguishing  characteristics,  of  the 
invention  to  which  it  refers,  and  prays  protection  for  his 
right  thereto,  until  he  shall  have  matured  that  invention. 
A  caveat  remains  in  force  only  one  year  ;  and  while  it  is  in 
force,  its  only  statutory  function  is  to  prevent  the  issuing  of 
any  patent  to  another,  for  the  same  invention,  until  after  the 
caveator  has  notice  of  the  interfering  application,  and  has 
thus  had  an  opportunity  to  file  an  application  himself,  and  so 
delay  the  issuing  of  a  patent  to  his  competitor  until  an  interfer- 
ence proceeding  in  the  Patent  Office  shall  have  decided  the 
question  of  priority.1  If  an  invention  is  fully  described  in 
a  caveat,  then  that  caveat  will  constitute  evidence  showing 
that  invention  to  have  been  made  at  least  as  early  as  the 
caveat  was  filed.  This,  however,  is  an  incidental  and  not 
a  statutory  function  of  such  a  document,  and  it  cannot  be 
performed  by  any  caveat  which  is  not  complete  enough  in  its 
description  to  enable  a  skilful  mechanic,  without  inventing 
anything  himself,  to  construct  a  specimen  of  the  invention 
to  which  the  caveat  refers.  But  even  where  a  caveat  does 
not  reach  that  standard,  it  constitutes  evidence  that  the 
invention  had  reached  the  stage  of  development  shown  in 
the  caveat,  at  the  time  the  caveat  was  executed.2 

Omission  to  file  a  caveat  does  not  impair  the  ultimate 
rights  of  an  inventor  ;3  and  omission  to  consider  a  caveat 
does  not  invalidate  a  patent  granted  to  another  in  pursuance 
of  the  oversight.4 

1  Revised  Statutes,  Section  4902;  3  Heath  v.  Hildreth,  1  McArthur's 
Bell  v.  Daniels,  1  Fisher,  372, 1858.  Patent  Cases,  25,  1841. 

2  Jones  fl.Wetherell,  1  Me  Arthur's  4  Cochrane  v.   Waterman,!  Mc- 
Patent  Cases,  413,  1855.  Arthur's  Patent  Cases,  59,  1844. 


CHAP.  VI.]  APPLICATIONS.  123 

But  whether  an  immature  invention  is  provisionally  pro- 
tected by  a  caveat  or  not,  it  should  not  be  made  the  subject 
of  an  application  for  a  patent  until  it  reaches  maturity  ;  for 
it  has  happened  in  the  past,  and  may  otherwise  happen 
hereafter,  that  a  patent  granted  on  an  application,  based  on 
an  immature  invention,  is  not  strong  enough  or  broad 
enough  to  give  any  valuable  exclusive  right,  while  being 
significant  enough  to  weaken  or  to  narrow  the  operation  of 
any  subsequent  patent  granted  to  the  same  inventor,  on  a 
mature  invention,  in  the  same  department  of  the  useful  arts. 

§  144.  No  appeal  lies  from  any  decision  of  the  Court  of 
Appeals  of  the  District  of  Columbia,  on  an  appeal  to  that 
tribunal  from  the  Commissioner  of  Patents.  But  an  appeal 
does  lie  from  any  decision  of  any  United  States  Circuit 
Court,  or  of  the  Supreme  Court  of  the  District  of  Columbia, 
on  any  bill  in  equity  which  may  be  filed  to  compel  the  is- 
suance of  a  patent,  after  an  unsuccessful  appeal  to  the  Court 
of  Appeals  of  the  District  of  Columbia,  from  the  rejection 
of  an  application  by  the  Commissioner  of  Patents.  "Where 
such  a  bill  is  filed  and  adjudicated  in  some  Circuit  Court  of 
the  United  States,  an  appeal  lies  from  its  decision  to  the 
Circuit  Court  of  Appeals  of  the  circuit  to  which  that  Circuit 
Court  belongs.1  And  where  such  a  bill  is  filed  and  adjudi- 
cated in  the  Supreme  Court  of  the  District  of  Columbia,  an 
appeal  lies  to  the  Court  of  Appeals  of  the  District  of 
Columbia.2  And  where  a  decree  of  the  latter  tribunal,  in 
disposing  of  such  an  appeal,  involves  the  validity  of  any 
patent,  as  it  may  in  the  case  of  an  interference  between  a 
patent  and  an  application,  an  appeal  apparently  lies  from 
that  tribunal,  to  the  Supreme  Court  of  the  United  States.3 

§  145.  An  application  for  a  patent  may  be  abandoned. 
That  abandonment  may  be  actual,  or  it  may  be  constructive. 
The  facts  which  constitute  an  actual  abandonment  of  an 
application,  may  also  constitute  an  actual  abandonment  of 


1  26  Statutes  at  Large,  Ch.  517,   Sec.  7,  p.  435. 

Sec.  6,  p.  828.  3  27  Statutes  at  Large,  Ch.  74, 

2  27  Statutes  at  Large,  Ch.  74,   Sec.  8,  p.  436. 


124  APPLICATIONS.  [CHAP.  vi. 

the  invention  covered  thereby;  and  a  constructive  abandon- 
ment of  an  application,  may  or  may  not  work  a  constructive 
abandonment  of  the  invention. 

Actual  abandonment  of  an  application  does  not  always 
follow  from  the  fact  that  the  applicant  withdrew  it  from  the 
Patent  Office.  If,  when  withdrawing  it,  he  intended  to  file 
a  new  application  for  the  same  invention,  and  accordingly 
does  so,  the  two  are  held  to  constitute  one  continuous 
application  within  the  meaning  of  the  law.1  This  doctrine 
applies,  even  if  the  new  application  is  not  filed  till  long 
after  the  old  one  was  withdrawn,  provided  there  was  no 
laches  chargeable  to  the  applicant  on  account  of  the  delay.2 

Nor  does  actual  abandonment  of  an  application  neces- 
sarily follow  from  the  fact  that  it  was  rejected  by  the  Patent 
Office,  and  then  allowed  to  lie  dormant  by  the  applicant. 
If,  in  such  a  case,  the  applicant  always  expected  to  secure  a 
patent,  either  on  the  original  application  or  on  another,  and 
if,  without  laches,  he  made  and  prosecuted  another  applica- 
tion for  the  same  invention,  and  secured  a  patent  thereon ; 
the  two  applications  are  considered,  in  the  eye  of  the  law, 
to  be  one.3 

Laches,  if  it  intervenes,  between  a  withdrawn  or  rejected 
application  and  a  new  application  covering  the  same  inven- 
tion, will,  however,  be  fatal  to  any  claim  of  continuity.4  It 
will  constitute  evidence  that  the  first  application  was  actually 
abandoned,  and  equally  good  evidence  of  the  actual  aban- 
donment of  the  invention  itself.5 

§  146.  Constructive  abandonment  of  an  application  occurs 
whenever  two  years  intervene  between  the  filing  of  the 

1  Godfrey  v.   Eames,    1  Wallace,  v.  McCormick,  5  Bann.  &  Ard.  244, 
317,  1863;  International  Crown  Co.  1880;  Ligowski  Clay  Pigeon  Co.  ®. 
v.    Richmond,    30    Fed.    Rep.    779,  Clay  Bird  Co.   34  Fed.  Rep.  334, 
1886;    Dederick    «.    Fox,  56    Fed.  1887. 

Rep.  715,  1892.  4  Bevin  v.  Bell  Co.  9  Blatch.  61, 

2  Howes  0.   McNeal,  3   Bann.  &  1871;  Weston  v.  White,  13  Blatch. 
Ard.  876,  1878.  452,  1876. 

3  Smith  v.  Dental  Vulcanite  Co.  5  Planing  Machine  Co.  •».  Keith, 
93  U.  S.  500,  1876;  Blandy  v.  Grif-  101  U.  S.  484,  1879. 

flth,   3  Fisher,  617,  1859;  Graham 


CHAP.  VI.]  APPLICATIONS.  125 

application  and  its  being  made  complete  enough  to  entitle  it 
to  examination,  according  to  the  rules  of  the  Patent  Office  ; 
and  such  an  abandonment  also  occurs  if  the  applicant 
allows  two  years  to  pass  without  regularly  prosecuting  his 
application,  after  any  particular  action  is  taken  thereon  by 
the  Patent  Office,  and  notified  to  him  ;  provided,  in  either 
case,  the  Commissioner  of  Patents  is  not  convinced  that  the 
delay  was  unavoidable.1  If  he  is  so  convinced  he  may  con- 
done the  delay  by  granting  a  patent ;  and  if  he  grants  a 
patent,  his  decision  on  the  point  is  conclusive.2 

All  applications,  also,  which  were  rejected  or  withdrawn 
prior  to  July  8,  1870,  and  not  revived  within  six  months 
after  that  day,  were  thereby  constructively  abandoned.3 
The  statutory  provision  just  cited,  cHid  not  operate  to  renew 
any  right  to  any  abandoned  invention.4  Nor  did  it  fix  any 
time  after  which  any  invention  should  be  held  to  be  aban- 
doned, for  it  provided  no  result  from  six  months'  delay, 
except  that  the  application  should  be  held  to  have  been 
abandoned. 

So,  also,  constructive  abandonment  of  his  application 
occurs  when  an  applicant  fails  to  pay  the  final  fee  within 
six  months  from  the  time  at  which  a  patent  is  allowed,  and 
notice  of  such  allowance  is  sent  to  him  or  to  his  agent.5 

Where  a  patent  is  issued,  notwithstanding  a  prior  construc- 
tive abandonment  of  the  application  therefor  ;  the  question 
will  arise  whether  the  patent  can  be  invalidated  on  that  ground 
in  an  infringement  suit,  or  only  in  a  bill  in  equity  to  repeal 
the  patent.  In  the  only  case  in  which  the  question  has 
arisen,  the  Circuit  Court  decided  that  the  defence  could  not 
be  made  in  an  infringement  suit ; 6  but  on  an  appeal  of  the 


1  Revised  Statutes,  Section  4894;  4  Planing  Machine  Co.  v.  Keith, 
Kirk  v.  Commissioner  of  Patents,  101  U.  S.  483,  1879. 

37  Off.  Gaz.  451,  1885.  «  Revised  Statutes,  Section  4885. 

2  M'Millin  •».  Barclay,  5  Fisher,  6  Lamprey  Protector  Co.  v.  Econ- 
199,  1871.  omy  Heater  Co,  62  Fed.  Rep.  592, 

3  16  Statutes  at  Large,  Ch.  230,  1894. 
Section  35,  p.  202. 


126  APPLICATIONS.  [CHAP.  vi. 

case,  the  Circuit  Court  of  Appeals  for  the  first  circuit,  ex- 
pressly passed  over  the  point  without  deciding  it.1 

§  147.  Constructive  abandonment  of  an  application  will 
work  constructive  abandonment  of  the  invention  covered 
thereby,  where  the  abandonment  of  the  application  arose 
from  either  of  the  causes  stated  in  the  first  paragraph  of 
the  last  preceding  section,  if  no  new  application  is  filed 
soon  enough  to  independently  avoid  the  statute  relevant  to 
public  use  or  sale  more  than  two  years  before  application 
for  a  patent.2  The  same  thing  is  true,  for  the  same  reason, 
where  the  abandonment  of  the  application  arose  from  the 
cause  stated  in  the  second  paragraph  of  the  last  preceding 
section.  But  the  same  reason  does  not  exist  relevant  to  the 
cause  of  constructive  abandonment  stated  in  the  third  para- 
graph of  that  section.  If,  therefore,  an  applicant  fails  to 
pay  the  final  fee  within  six  months  after  an  allowance  of  a 
patent  to  him,  and  if  he  files  a  new  application  for  a  patent, 
on  the  same  invention,  within  two  years  after  that  allowance, 
but  more  than  two  years  after  that  invention  was  first  in 
public  use  or  on  sale,  the  question  arises  whether  the  con- 
structive abandonment  of  the  first  application  will  prevent 
the  two  applications  from  being  regarded  as  one,  on  the 
principles  stated  in  the  second  and  third  paragraphs  of 
Section  145  in  this  chapter.  No  answer  to  that  question  is 
found  in  any  adjudicated  case  ;  and 'as  the  point  is  unlikely 
to  arise,  and  as  its  solution  involves  much  argument,  no 
answer  is  attempted  in  this  book. 

But  in  every  case  where  a  new  application  is  made  with- 
in two  years  after  the  invention  was  first  in  public  use  or 
on  sale,  a  patent,  if  granted  on  that  new  application,  will 
not  be  unfavorably  affected  by  the  fact  that  a  former  appli- 
cation was  made,  and  was  constructively  abandoned. 


1  Economy  Heater  Co.  v.   Lam-  913,  1882;  Western  Electric  Co.   «. 
prey  Protector  Co.  65    Fed.   Rep.  Sperry  Electric  Co.  58  Fed.  Rep. 
1000,  1895.  191,  1893. 

2  Lindsay  ®.  Stein,  10  Fed.  Rep. 


CHAP.  VI.]  APPLICATIONS.  127 

§  148.  Patents  are  authorized  by  law,  only  on  compliance 
with  the  statutory  prerequisites  to  their  issue.  The  Com- 
missioner has  therefore  no  jurisdiction  to  grant  any  patent, 
except  where  all  those  prerequisites  have  been  substantially 
performed.  If  he  inadvertently  grants  a  patent  in  any 
other  case,  he  exceeds  his  jurisdiction,  and  it  is  therefore 
open  to  every  person  who  is  sued  as  an  infringer  of  that 
patent,  to  successfully  defend  against  such  an  action,  by 
pleading  and  proving  the  particular  fault  or  omission  with 
which  the  applicant  was  chargeable.1  In  all  cases,  however, 
where  the  application  was  complete  enough  to  give  the 
Commissioner  jurisdiction,  the  patents  will  be  unaffected 
by  evidence  that  the  Commissioner  was  improvident  or  in- 
judicious in  the  exercise  of  his  discretionary  powers  over 
these  applications.  If,  for  example,  he  omits  to  require 
that  specimens  of  the  ingredients  shall  be  furnished,  with 
a  particular  application  for  a  patent  for  a  composition  of 
matter,  it  is  not  open  to  any  infringer  to  show  that  the  pub- 
lic interest  would  have  been  better  subserved  had  such  a 
requirement  been  made.2  The  same  rule  also  governs  the 
same  point  in  cases  where  the  Commissioner  omits  to  require 
a  model.3  But  it  is  probably  open  to  any  defendant  to  de- 
feat a  recovery  for  infringement,  by  pleading  and  proving 
that  no  drawing  of  the  invention  was  filed  in  the  Patent 
Office,  and  that  the  nature  of  the  case  admitted  of  drawings. 
This  must  be  the  law,  unless  the  Commissioner  is  the  sole 
and  final  judge  of  this  last  point  of  fact ;  and  it  is  not 
probable  that  Congress  intended  to  make  him  so,  for  no  such 
intention  is  expressed  in  the  statute,4  and  no  such  intention 
is  consistent  with  public  policy. 


1  Grant  v.  Raymond,   6  Peters,  2  Tarr  v.  Folsom.  1  Bann.  &  Ard. 

218,  1832;  Parks  v.  Booth,  102  U.  24,  1874. 

S.  101,  1880;  Ransom  ».  New  York,  »  Revised  Statutes,  Section  4891. 

1  Fisher,  257,  1856.  *  Revised  Statutes,  Section  4889. 


CHAPTEE  VII. 


LETTERS     PATENT. 


149.  No  exclusive  right  to  inven- 
tions at  common  law. 

150.  Constitutional  exclusive  right 
to    inventions  in  the    United 
States. 

151.  Patent  sare  property. 

152.  Dignity  of    property    in    pat- 
ents. 

153.  Patents  are  not  odious  monop- 
olies. 

154.  Patent  rights  are  absolute,  not 
qualified. 

155.  Patent  rights  are  beyond  State 
interference. 

156.  Patent  rights  are  not  subject  to 
common  law    executions,   but 
may  be  subjected  to  creditors' 
bills  in  equity. 

157.  Patent  rights  are  as  exclusive 
of  the  government,  as  they  are 
of  any  citizen. 

158.  Patents  do  not  cover  specimens 
purchased  of  the  inventor,  or 
made  with  his  knowledge  and 
consent,     before    application 
therefor. 

159.  The  foregoing  rule  has  no  ap- 
.     plication  to   patents  for  pro- 
cesses. 

160.  Territorial    scope    of    United 
States  patents. 

161.  Operation    of    United    States 
patents  on  the  decks  of  ships. 

162.  Duration  of  patents. 

163.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1870. 


164.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1839. 

165.  Duration  of  United  States  pat- 
ents for  inventions  first  patent- 
ed in  a  foreign  country,  accord- 
ing to  the  statute  of  1861. 

170.  Beginning    of    the   terms    of 
United  States  patents. 

171.  To    whom  letters    patent  are 
granted  by  the  government. 

172.  Letters  patent  as  documents. 

173.  The  specification. 

174.  The  description. 

175.  The  description. 

176.  The  claim  or  claims. 

177.  The  claim  or  claims. 

178.  Particularity    in    descriptions 
and  claims,  are  conditions  pre- 
cedent to  validity. 

179.  Questions  of  sufficiency  of  par- 
ticularity of   descriptions  and 
claims,  are  questions  of  fact, 
and  not  of  law. 

180.  Plurality   of  inventions  in   a 
single  letters  patent. 

180a.  Plurality  of  letters  patent  for 
different  parts  or  combinations 
in  a  machine  or  apparatus. 

181.  Construction  of  letters  patent. 

182.  Claims  to  be  construed  in  the 
light  of  descriptions. 

182a.  Construction  of  claims  which 
employ  reference  letters  or 
numerals. 

183.  Construction      of     functional 
claims. 

128 


CHAP.  VII.] 


LETTEKS  PATENT. 


129 


184.  Claims  construed  in  the  light 
of  the  state  of  the  art. 

185.  Proper  liberality  of  construc- 
tion. 

186.  Proper  strictness  of  construc- 
tion. 

187.  Construction  in  the  light  of 
contemporaneous  understand- 
ing of  the  inventor. 

187«.  Patent  Office  limitations. 

188.  Construction  in   the   light    of 


contemporaneous  statutes. 

189.  Questions  of  construction  are 
questions   of    law,  and  not  of 
fact. 

190.  Letters  patent  presumed  to  be 
for  same  invention  as  the  ap- 
plication therefor. 

191.  Letters  patent  are  constructive 
notice  of  their  contents  to  every 
person. 


§  149.  No  inventor  has  any  special  right  to  his  invention 
at  common  law.1  This  is  not  a  virtue  in  that  law.  It  is  an 
imperfection  ;  an  omission.  That  omission  is  due  to  the 
fact  that  the  common  law  came  into  being  in  the  middle 
ages,  and  in  England.  New  and  useful  inventions  were 
seldom  produced  in  those  ages,  and  most  of  those  which 
were  produced,  were  produced  in  Italy  or  on  the  continent 
of  Europe.  There  was  little  or  no  occasion  or  opportunity 
in  England,  for  the  creation  or  recognition  of  any  exclusive, 
or  otherwise  paramount,  customary  right  in  inventions. 
Even  in  those  countries  where  new  and  useful  things  were 
more  frequently  invented,  their  inventors  were  oftener  per- 
secuted as  heretics  than  rewarded  as  benefactors.  Des- 
potic kings  were  wont,  in  many  countries,  to  confer  monop- 
olies upon  their  favorites,  regardless  of  any  meritorious 
right  to  the  things  monopolized  ;  and  it  sometimes  hap- 
pened, in  England  and  elsewhere,  that,  in  pursuance  of  this 
practice,  a  monopoly  of  an  invention  was  granted  to  its 
true  inventor.  Such  a  grant,  however,  was  always  a  mat- 
ter of  kingly  grace,  and  never  a  matter  of  legal  right.  In 
the  reign  of  James  the  First,  the  English  parliament 
limited  this  exercise  of  royal  prerogative  to  cases  of  inven- 
tions, and  thus  laid  the  foundation  of  the  patent  laws  of 
England.  The  limiting  statute  did  not  purport  to  confer 
upon  inventors,  any  inchoate  right  which  they  might 


1  Brown  v.  Duchesne,  19  Howard, 
195,  1856;  Dable  Grain  Shovel  Co. 


«.  Flint,  137  U.  S.  41,  1890. 


130  LETTEES  PATENT.  [CHAP.  VII. 

perfect  and  make  absolute  by  proceeding  in  any  manner 
pointed  out  by  law.  It  recognized  the  power  of  the  king 
to  secure  to  any  inventor,  an  exclusive  right  to  his  inven- 
tion, if  his  royal  pleasure  prompted  him  so  to  do.  But  the 
exercise  of  that  power  was  so  infrequent  for  more  than  a 
century,  that  Blackstone,  in  his  Commentaries  on  the  Laws 
of  England,  devoted  but  one  sentence  to  the  branch  per- 
taining to  patents  for  inventions. 

§  150.  In  the  United  States  of  America,  the  superior 
right  of  an  inventor  to  his  invention  has  a  far  better  foun- 
dation than  could  be  furnished  by  the  prerogative  of  any 
king.  That  foundation  is  the  consent  of  the  people  of  the 
United  States  :  a  consent  primarily  expressed  in  the  Fed- 
eral Constitution,  and  elaborately  defined  in  the  federal 
statutes.  The  Constitution  was  established  as  the  supreme 
law  of  the  United  States,  on  the  twenty-first  day  of  June, 
1788.  It  conferred  power  upon  Congress  to  promote  the 
progress  of  the  useful  arts,  by  securing,  for  limited  times, 
to  inventors,  the  exclusive  right  to  their  respective  inven- 
tions.1 In  exercise  of  that  power,  Congress,  on  the  tenth 
day  of  April,  1790,  enacted  the  first  federal  statute  on  the 
subject ;  and  provided  therein  that  the  exclusive  right  in 
contemplation,  should  be  secured  to  the  respective  inven- 
tors, by  means  of  a  written  grant  from  the  United  States,  to 
be  named  letters  patent.2  It  is  the  office  of  this  chapter  to 
explain  the  nature,  the  extent,  and  the  duration  of  the 
right  secured  by  such  a  document ;  to  outline  the  general 
form  and  necessary  characteristics  of  such  a  document 
itself ;  and  to  set  forth  the  rules  by  which  such  documents 
are  properly  construed. 

§  151.  Patents  are  property  ;3  and  the  owner  of  a  patent 
is  both  legally  and  equitably  entitled  to  the  same  protection 


1  Article  1,  Section  8.  Fruit  Jar  Co.  v.  Wright,  94  U.  S. 

2  1   Statutes  at  Large,  Ch.  7,  p.  96,  1876;  Cammeyer  ».  Newton,  94 
109.  U.  S.  226, 1876;  James®.  Campbell, 

3  Brown®.  Duchesne,  19  Howard,  104  U.   S.  357,    1881;     Marsh    v. 
195,  1856;  Seymour  v.  Osborne,  11  Nichols,  128  U.  S.  612,  1888. 
Wallace,   533,    1870;    Consolidated 


CHAP.  VII.]  LETTERS  PATENT.  131 

for  that  property,  that  the  owner  of  any  other  species 
of  property  may  enjoy,1  and  he  cannot  be  constitutionally 
deprived  of  that  property  without  due  process  of  law.2 
Due  process  of  law  includes  the  constitutional  judgments 
and  decrees  of  courts ;  but  it  does  not  include  any  act  of 
Congress,  or  of  any  other  legislature.3  Patent  rights,  once 
vested,  are  therefore  incapable  of  being  divested  by  act  of 
Congress.4  Nor  can  Congress  do  indirectly,  that  which  it  is 
forbidden  to  do  with  directness.  It  cannot  destroy  nor 
seriously  impair  the  value  of  a  patent  right,  under  the  guise 
of  altering  or  repealing  the  existing  remedies  applicable  to 
its  enforcement,  any  more  than  it  can  so  treat  any  other 
kind  of  property.5 

§  152.  The  right  of  property  which  an  inventor  has  in  his 
invention,  is  excelled,  in  point  of  dignity,  by  no  other  prop- 
erty right  whatever.  It  is  equalled,  in  point  of  dignity,  only 
by  the  rights  which  authors  have  in  their  copyrighted 
books.  The  inventor  is  not  the  pampered  favorite  or  bene- 
ficiary of  the  government,  or  of  the  nation.  The  benefits 
which  he  confers,  are  greater  than  those  which  he  receives. 
He  does  not  cringe  at  the  feet  of  power,  nor  secure  from 
authority  an  unbought  privilege.  He  walks  everywhere 
erect,  and  scatters  abroad  the  knowledge  which  he  created. 
He  confers  upon  mankind  a  new  means  of  lessening  toil,  or 
of  increasing  comfort ;  and  what  he  gives  cannot  be  de- 
stroyed by  use,  nor  lost  by  misfortune.  It  is  henceforth  an 
indestructible  heritage  of  posterity.  On  the  other  hand,  he 
receives  from  the  government,  nothing  which  cost  the  gov- 
ernment or  the  people  a  dollar  or  a  sacrifice.  He  receives 
nothing  but  a  contract,  which  provides  that  for  a  limited 
time  he  may  exclusively  enjoy  his  own.  Compared  with 


1  Thomson  v.  Citizens  National  4  Hill  (N.  Y.),  147,  1843. 

Bank,  53  Fed.  Rep.  252,  1892.  *  McClurg  v.  Kingsland,  1   How- 

2  Fifth  Amendment  to  the  Consti-  ard,  202,  1843. 

tion.  s  Green  v.  Biddle,  8  Wheaton,  75, 

3  Barren  v.  Baltimore,  7  Peters,  1823;  Bronson  v.  Kinzie,  1  Howard, 
247,   1833;    Kent's    Commentaries,  317,  1843. 

Lecture  24,  p.  13;  Taylor  v.  Porter, 


132  LETTERS  PATENT.  [CHAP.  VII. 

those  who  acquire  property  by  devise  or  inheritance ;  com- 
pared with  those  who  acquire  property  by  gift  or  marriage  ; 
compared  with  those  who  acquire  property  by  profits  on 
sales,  or  by  interest  on  money ;  the  man  who  acquires 
property  in  inventions,  by  creating  things  unknown  before, 
occupies  a  position  of  superior  dignity.  Even  the  man 
who  creates  value  by  manual  labor,  though  he  rises  in  dig- 
nity above  the  heir,  the  donee,,  the  merchant,  and  the 
money-lender,  falls  in  dignity  below  the  author  and  the  in- 
ventor. The  inventor  of  the  reaper  is  entitled  to  greater 
honor  than  his  father  who  used  the  grain  cradle  ;  and  the 
inventor  of  the  grain  cradle  is  entitled  to  greater  honor  than 
his  ancestors,  who,  for  a  hundred  generations,  had  used 
the  sickle.  Side  by  side  stand  the  inventor  and  the  author. 
Their  labor  is  the  most  dignified  and  the  most  honorable 
of  all  labor ;  and  the  resulting  property  is  most  perfectly 
theirs. 

SIB  FRANCIS  BACON  gave  the  weight  of  his  opinion,  to 
views  somewhat  similar  to  the  foregoing.  The  following  is 
a  translation  of  one  of  his  Latin  paragraphs. 

"  The  introduction  of  great  inventions  appears  one  of  the 
most  distinguished  of  human  actions,  and  the  ancients  so 
considered  it;  for.  they  assigned  divine  honors  to  the  authors 
of  inventions,  but  only  heroic  honors  to  those  who  displayed 
civil  merit ;  such  as  the  founders  of  cities  and  empires,  legis- 
lators, the  deliverers  of  their  country  from  lasting  misfor- 
tunes, the  quellers  of  tyrants  and  the  like.  And  if  any 
one  rightly  compare  them,  he  will  find  the  judgment  of 
antiquity  to  be  correct;  for  the  benefits  derived  from  inven- 
tions may  extend  to  mankind  in  general,  but  civil  benefits  to 
particular  lands  alone  ;  the  latter,  moreover,  last  but  for  a 
time,  the  former  forever.  Civil  reformation  seldom  is  car- 
ried on  without  violence  and  confusion,  while  inventions 
are  a  blessing  and  a  benefit  without  injuring  or  afflicting 
anv."1 


1  Novum  Organum,  Book  1,  Section  CXX1X. 


CHAP.  VII.]  LETTEES  PATENT.  133 

§  153.  "  Letters  patent  are  not  to  be  regarded  as  monopo- 
lies, created  by  the  executive  authority  at  the  expense  and 
to  the  prejudice  of  all  the  community  except  the  persons 
therein  named  as  patentees,  but  as  public  franchises  granted 
to  inventors  of  new  and  useful  improvements,  for  the  pur- 
pose of  securing  to  them,  as  such  inventors,  for  the  limited 
term  therein  mentioned,  the  exclusive  right  and  liberty  to 
make  and  use,  and  vend  to  others  to  be  used,  their  own  in- 
ventions, as  tending  to  promote  the  progress  of  science  and 
the  useful  arts,  and  as  matter  of  compensation  to  the 
inventors  for  their  labor,  toil  and  expense  in  making  the 
inventions,  and  reducing  the  same  to  practice  for  the  public 
benefit,  as  contemplated  by  the  Constitution  and  sanctioned 
by  the  laws  of  Congress."  Such  is  the  accepted  doctrine 
as  formulated  by  Justice  CLIFFOKD  when  speaking  for  the 
Supreme  Court.1  The  same  ideas  were  more  concisely 
expressed  in  an  earlier  case  by  Justice  DANIEL.2  Speaking 
of  the  inventor's  exclusive  right,  he  said :  "  This  was  at 
once  the  equivalent  given  by  the  public  for  benefits  be- 
stowed by  the  genius  and  meditations  and  skill  of  individ- 
iials,  and  the  incentive  to  further  efforts  for  the  same 
important  objects."  Writing  an  opinion  of  the  Supreme 
Court,  and  referring  to  the  doctrine  of  patents,  Justice 
MILLER  said  :  "  It  is  no  longer  a  scarcely  recognized  prin- 
ciple, struggling  for  a  foothold,  but  it  is  an  organized  sys- 
tem, with  well-settled  rules,  supporting  itself  at  once  by  its 
utility,  and  by  the  wealth  which  it  creates  and  commands."3 
These  opinions  of  the  Supreme  Court  agree,  therefore,  in 
holding,  with  all  fair  and  thoughtful  men,  that  patent  rights 
are  not  hurtful  monopolies,  but  are  rights  of  property  at 
once  dignified,  honorable,  and  strong. 

§  154.  A  patent  right  is  an  absolute,  and  not  a  qualified, 
right.  During  the  term  of  his  patent,  a  patentee  may,  if  he 
pleases,  decline  to  allow  any  other  person  to  make,  use,  or 


x  Seymour  fl.Osborne.il  Wallace,      322,  1858. 

533,  1870.  s  Merrill  v.   Yeomans,   94  U.  8. 

8  Kendall  v.  Winsor,  21  Howard,      573,  1876. 


134  LETTERS  PATENT.  [CHAP.  VII. 

sell  the  invention  which  it  covers,  and  at  the  same  time 
may  refrain  from  making,  using  and  selling  his  invention 
himself.1  From  July  1832,  until  July  1870,  there  was  an 
exception  to  this  rule.  Under  the  statute  of  1790,  aliens, 
as  well  as  citizens,  might  receive  United  States  patents ; 2 
but  the  statute  of  1793  confined  that  privilege  to  citizens 
of  the  United  States.3  The  statute  of  1800  extended  the 
right  to  aliens  who  had  resided  two  years  within  the  United 
States,  and  provided  that  patent  rights  should  be  obtained, 
used,  and  enjoyed  by  such  persons,  in  as  full  and  ample  a 
manner,  and  under  the  same  conditions,  limitations,  and 
restrictions,  as  in  the  case  of  citizens.4  That  continued  to 
be  the  state  of  the  law  on  the  point  till  July  13,  1832  ; 
when  Congress  provided  that  still  another  class  of  aliens 
might  have  patents  ;  namely,  aliens  who  were  residents  of 
the  United  States,  and  had  declared  their  intention,  accord- 
ing to  law,  to  become  citizens  thereof.  It  was,  however, 
expressly  provided,  that  any  patent,  granted  to  an  alien  of 
this  class,  should  determine  and  become  absolutely 'void, 
without  resort  to  any  legal  process  to  annul  or  cancel  the 
same,  in  case  of  failure  on  the  part  of  the  patentee,  for  the 
space  of  one  year  from  the  issuing  thereof,  to  introduce 
into  public  use  in  the  United  States  the  invention  covered 
by  the  patent ;  or  in  case  such  public  use  be  discontinued 
for  any  period  of  six  months  ;  or  in  case  of  failure  of  the 
patentee  to  become  a  citizen  of  the  United  States  as  soon 
as  the  law  allowed.5  Four  years  later,  however,  this  statute 
was  repealed  by  that  of  1836.  The  latter  statute  extended 

1  Pitts  v.  Wemple,  1  Bissell,  93,  Light  Co.  57  Fed.  Rep.  644,  1893; 

1855;  American  Bell  Telephone  Co.  Masseth  «.   Reiber,  59    Fed.  Rep. 

«.   Service  Co.  45  Off.  Gaz.  1193,  614,  1894. 

1888;  Consolidated  Roller  Mill  Co.  2  j  Statutes  at  Large,  Ch.  7,  Sec- 
®.  Coombs,  39  Fed.  Rep.  805,  1889;  tion  1,  p.  109. 
Campbell    Printing    Press   Co.   t>.  3  1  Statutes  at  Large,  Ch.  11,  Sec- 
Manhattan  Ry.   Co.   49  Fed.  Rep.  tion,  1,  p.  318. 
935, 1892;  Edison  Electric  Light  Co.  4  2  Statutes  at  Large,  Ch.  25,  Sec- 
®.  Sawyer-Man  Electric  Co.  53  Fed.  1,  p.  37. 

Rep.  598,  1892;  Edison  Electric  5  4  Statutes  at  Large,  Ch.  203,  Sec- 
Light  Co.  v.  Mt.  Morris  Electric  tion  1,  p.  577. 


CHAP.  VII.  J  LETTERS  PATENT.  135 

the  right  to  obtain  United  States  patents  to  all  inventors  ; 
but  it  provided  that  an  effectual  defence  to  an  action  for 
infringement  might  be  based  on  the  fact  that  the  patentee, 
if  an  alien  at  the  time  the  patent  was  granted,  had  failed 
and  neglected,  for  the  space  of  eighteen  months  from  the 
date  of  the  patent,  to  put  and  continue  on  sale  to  the  public, 
on  reasonable  terms,  the  invention  for  which  the  patent 
issued.1  But  no  such  qualification  of  any  patent  right  is 
contained  in  the  consolidated  Patent  Act  of  1870,2  nor  in 
'  the  Revised  Statutes  ; 3  so  that  the  rule  stated  at  the  head 
of  this  section  applies  to  all  existing  patents. 

§  155.  No  State  has  any  power  to  make  a  law  interfering 
with  the  sale  of  any  patent  right,4  but  every  State  has 
power  to  regulate  the  making,  the  selling  and  the  using  of 
the  things  covered  by  any  patent  to  the  same  extent  that  it 
lawfully  regulates  the  making,  selling,  and  using  of  similar 
unpatented  things.  Things  covered  by  patents  are  as 
much  subject  to  the  law  of  common  carriers,5  the  revenue 
laws,6  and  other  public  laws  7  of  a  State  or  municipality,  as 
any  other  things.  A  patent  for  a  dynamite  powder,  or  for  a 
deadly  poison,  or  for  an  explosive  oil,  does  not  oust  nor  affect 
the  power  of  local  authorities  to  prescribe  the  place'and  man- 
ner of  the  manufacture,  storage  and  sale  of  those  dangerous 
substances.  Nor  does  a  patent  on  a  sewing-machine  exempt 
the  patentee  from  any  State  tax  on  the  machines  he  may  make, 
use  or  sell  within  the  boundaries  of  that  State.  The  reason 
why  a  State  may  regulate  the  sale  of  a  patented  thing,  and 
may  not  regulate  the  sale  of  the  patent  covering  that  thing? 
is  explainable  as  follows.  A  patentee  has  two  kinds  of  rights 
in  his  invention.  He  has  a  right  to  make,  use,  and  sell 
specimens  of  the  invented  thing  ;  and  he  has  a  right  to 


1  5  Statutes  at  Large,   Ch.   857, '    Fed.  Rep.  394,  1885. 

Sections  6  and  15,  pp.  119  and  123.  5  Delaware  Telephone  Co.  v.  Del- 

2  16  Statutes  at  Large,  Ch.  230,  aware,  50.  Fed.  Rep.  677,  1892. 
Section  61,  p.  208.  «  Weber  v.  Virginia,   103  U.    S. 

3  Revised  Statutes,  Section  4920.  347,  1880. 

4  Ex  parte  Robinson,   2  Bissell  7  Patterson  v.  Kentucky,  97  U.  S. 
313,  1870;  Castle  v.  Hutchinson,  25  505,  1878. 


136  LETTERS  PATENT.  [CHAP.  VII. 

prevent  all  other  persons  from  doing  either  of  those  'acts. 
The  first  of  these  rights  is  wholly  independent  of  the  patent 
laws ;  while  the  second  exists  by  virtue  of  those  laws  alone.1 
A  patentee  therefore  holds  the  first  of  these  rights  subject 
to  the  police  powers,  and  the  taxing  powers,  of  the  State  ; 
while  the  second  being  the  creature  of  the  laws  of  Congress, 
is  wholly  beyond  State  control  or  interference.8 

§  156.  Patent  rights,  being,  as  they  are,  intangible  prop- 
erty, cannot  be  seized  and  sold  under  the  authority  of  any 
writ  of  fieri  facias,  or  other  common-law  execution.2  They 
may,  however,  be  reached  by  a  creditor's  bill  in  equity,  and 
thus  be  applied  to  the  payment  of  the  debts  of  the  owners ; 
the  same  as  trust  property,  choses  in  action,  or  stock  of  a 
debtor  in  a  corporation,  may  be  reached  and  applied.  A 
court  of  equity  may,  in  pursuance  of  its  powers  in  such 
cases,  decree  that  the  debtor  patentee  pay  the  judgment 
upon  which  the  bill  is  based,  or,  in  default  thereof,  that  his 
patent  right  be  sold  under  the  direction  of  the  court,  and 
an  assignment  thereof  be  executed  by  him,  and,  in  default 
of  his  executing  such  an  assignment,  that  some  suitable 
person  be  appointed  trustee  to  execute  the  same  in  his 
place,4  or  that  the  master  in  chancery  of  the  court,  shall 
perform  that  function. 5 

§  157.  Patent  rights  are  exclusive,  not  only  of  citizens 
and  residents  of  the  United  States,  but  also  of  the  govern- 
ment itself,  and  of  its  agents.  The  government  has  no  more 
right  than  any  private  citizen,  to  make,  use,  or  sell  a  pat- 
ented invention,  without  the  license  of  the  patentee.6  When 


1  Bloomer  «.  McQuewan,  14  How-  4  Ager  v.  Murray,  105  U.  S.  126, 
ard,  539,  1852;  In  re  Brosnahan,  18  1881. 

Fed.  Rep.  62,  1883;  United  States  5  Wilson  ®.   Fire  Alarm  Co.  52 

«.  Bell  Telephone  Co.  29  Fed.  Rep.  Off.  Gaz.  901,  1890. 

43,  1886.  6  United  States  v.  Burns,  12  Wal- 

2  May  «.  County  of  Buchanan,  29  lace,  252,  1870;  Cammeyer  •».  New- 
Fed.  Rep.  473,  1886.  ton,  94  U.  S.  234,   1876;  Solomons 

3  Stephens  v.  Cady,  14  Howard,  v.   United    States,   137   U.   S.   346, 
528,  1852;  Stevens  v.  Gladding,  17  1890. 

Howard,  447,  1854. 


CHAP.  VII.]  LETTEKS  PATENT.  137 

the  government  grants  letters  patent  for  an  invention,  it  con- 
fers upon  the  patentee  an  exclusive  property  therein,  which 
cannot  be  appropriated  or  used  by  the  government  itself> 
without  just  compensation,  any  more  than  land  which  has 
been  patented  to  a  private  purchaser  can,  without  compen- 
sation, be  appropriated  or  used  by  the  government.1 

§  158.  No  patent  right  covers  any  use  or  sale  of  any 
specimen  of  the  patented  thing  which  was  purchased  of  the 
inventor,  or  made  by  another  with  his  knowledge  and  con- 
sent, before  his  application  for  a  patent  therefor.2  Where 
another  than  the  inventor,  surreptitiously  obtains  knowledge 
of  an  invention,  and,  without  the  consent  of  the  inventor* 
makes  a  specimen  of  the  invented  thing  before  any  patent 
thereon  is  applied  for,  that  specimen  is  covered  by  a  patent 
for  that  invention,  as  truly  and  as  fully  as  it  would  be  if  it 
had  been  made  by  an  infringer  after  the  date  of  that  patent. 
Such  a  case  is  clearly  outside  of  the  rule  just  stated,  and 
of  the  statute  upon  which  that  rule  is  based.  Indeed  Justice 
STORY,S  and  afterward  the  full  Supreme  Court,4  held  such  a 
case  to  be  outside  the  corresponding  provision  of  the  Patent 
Act  of  1839,5  though  that  provision  did  not  literally  exclude 
such  a  case. 

Where  another  than  the  first  inventor,  re-invents  and  con- 
structs a  specimen  of  an  invention,  before  any  patent  is 
applied  for  thereon,  and  does  so  without  any  knowledge  of 
tjie  inventor,  or  of  his  doings,  and  without  the  knowledge 
or  consent  of  the  inventor  himself,  he  cannot  invoke  the  rule 
stated  at  the  beginning  of  this  section  ;  because  knowledge 
and  consent  of  the  inventor  is  an  express  element  in  the 
statute  which  supports  that  rule.  If,  however,  such  a  re- 
invention and  such  a  construction  occurred  before  July  8, 


1  James  v.  Campbell,  104  U.  S.  3  Pierson  v.  Screw  Co.  3  Story. 
356,  1881;  United  States  v.  Palmer,  402,  1844. 

128  U.  S.  271,  1888.  4  Kendall  v.  Winsor,  21  Howard, 

2  Revised  Statutes,  Section  4899;  326,  1858. 

Wade  v.  Metcalf,   129  U.   S.   202,  5  5  Statutes  at  Large,  Ch.  88,  Sec- 

1889;    Dable  Grain  Shovel  Co.   «.  tion  7,  p.  354. 
Flint,  137  U.  S.  41,  1890. 


138  LETTERS  PATENT.  [CHAP.  VII. 

1870,  the  thing  so  constructed  is  outside  of  any  patent  after- 
ward applied  for,  because  the  Patent  Act  of  1839  can  be  in- 
voked in  its  behalf,  and  because  the  corresponding  provision 
of  that  act  was  not  limited  to  cases  where  the  inventor  had 
knowledge  and  gave  consent.  Where  such  a  re-invention 
and  construction  occurred  after  July  8,  1870,  it  is  probable 
that  the  specific  thing,  so  constructed,  is  taken  out  of  the 
operation  of  a  patent  afterward  applied  for,  by  the  direct 
action  of  the  fifth  amendment  to  the  Constitution  of  the 
United  States.  That  amendment  provides  that  no  person 
shall  be  deprived  of  property  without  due  process  of  law. 
Things  independently  re-invented  and  innocently  made,  be- 
fore the  first  inventor  applied  for  a  patent  thereon,  are  the 
lawful  property  of  him  who  thus  made  them.  To  deprive 
him  of  the  right  to  use  and  to  sell  those  things,  would  be  to 
lessen  or  to  destroy  their  value,  and  thus  to  deprive  him  of 
property  rights.  If  such  an  act  is  ever  done  at  the  suit  of 
the  first  inventor,  after  he  gets  his  patent,  it  will  be  done  by 
virtue  of  that  patent.  Now,  a  patent  is  the  creature  of  a 
statute.  No  statute  is  "  due  process  of  law,"1  and  no  pat- 
ent can  be  "  due  process  of  law  "  unless  a  creature  can  be 
greater  than  its  creator :  unless  a  statute  can  authorize  a 
contract  to  accomplish,  upon  the  rights  of  third  parties,  a 
result  which  the  statute  itself  is  forbidden  to  accomplish. 
If  this  reasoning  and  this  conclusion,  are  correct,  it  will  not 
follow  therefrom,  that  such  a  re-inventor  may  construct  any 
specimen  of  the  invention  after  the  first  inventor  has  obtained 
a  patent  thereon.  To  deprive  a  re-inventor  of  such  a  priv- 
ilege, is  not  to  deprive  him  of  property,  for  no  re-inventor 
has  any  property  right  in  an  invention  which  he  was  the 
second  in  the  United  States  to  make,  any  more  than  he 
would  have  if  he  had  learned  of  that  invention  from  a  news- 
paper or  from  a  book. 

§  159.  The  rule  stated  at  the  head  of  the  last  section  does 
not  apply  to  any  process  patent.     The  provision  of  1870,2 

1  Barren  v.  Baltimore,  7  Peters,          2  16  Statutes  at  Large,  Ch.  230, 
247,  1833;  Taylor  v.  Porter,  4  Hill      Section  37,  p.  203. 
(N.  Y.)  147,  1843. 


CHAP.  VII.  J  LETTERS  PATENT.  139 

and  Section  4899  of  the  Revised  Statutes,  treat  only  of 
machines  or  other  patentable  articles,  and  confer  exemption 
from  the  operation  of  patents  upon  nothing  but  specific 
things.  Now,  a  process  is  neither  an  article  nor  a  thing.  It 
is  a  series  of  acts.  It  is. therefore  outside  the  language  of 
the  law  on  this  subject.  It  is  also  outside  the  reason  of 
that  law.  That  reason  is  as  follows.  Where  another  than 
the  first  inventor  of  a  particular  tangible  thing,  buys  from 
the  inventor  a  specimen  of  that  thing,  or  makes  such  a 
specimen  with  his  consent,  or  re-invents  and  makes  such  a 
specimen  independently  of  the  first  inventor,  that  specimen 
ought  to  be  exempt  from  any  patent  afterward  applied  for 
by  the  first  inventor ;  because,  if  it  is  not  so  exempt,  it  will 
become  worthless  in  the  hands  of  one  who  honestly  ex- 
pended of  his  substance  to  procure  it,  and  who  procured  it 
without  violating  any  patent  or  any  law.  Processes  are  not 
subjects  of  these  considerations.  A  process  cannot  be 
purchased.  The  right  to  practice  a  patented  process  can 
indeed  be  purchased  ;  but  the  right  to  practice  an  un- 
patented  process,  while  it  remains  unpatented,  cannot  be 
the  subject  of  a  sale,  because  that  right  belongs  to  every 
one  without  any  purchase.  So  also,  if  an  inventor  of  a 
process  consents  that  another  person  may  practice  that 
process,  before  the  inventor  applies  for  a  patent,  that  fact 
furnishes  no  reason  why  that  person  should  be  allowed  to 
practice  that  process,  against  the  will  of  that  inventor,  after 
the  date  of  his  patent.  To  deprive  such  a  person  of  such  a 
privilege,  is  not  to  deprive  him  of  the  use  of  a  thing.  It  is 
only  to  deprive  him  of  the  privilege  of  repeating  a  series  of 
acts.  These  considerations  apply  also  to  cases  where  a  re- 
inventor  produces  and  practices  a  process,  after  its  produc- 
tion by  the  first  inventor,  and  before  any  application  is 
made  for  a  patent  thereon,  and  without  any  knowledge  of 
the  first  inventor  or  his  doings.  Such  a  re-inventor  has  no 
more  natural  right  to  practice  that  process,  after  a  patent  is 
granted  to  the  first  inventor,  than  any  other  person  has. 
He  has  no  such  right  growing  out  of  the  fact  'that  he  was 
a  re-inventor,  because  the  patent  laws  do  not  reward 


140  LETTERS  PATENT.  [CHAP.  VII. 

re-inventors,  and  because  patents  to  first  inventors  are 
exclusive  of  re-inventors,  as  well  as  of  other  persons.  He 
has  no  such  right  growing  out  of  rights  of  property, 
because  to  deprive  him  of  the  privilege  of  repeating  the 
process  is  not  to  deprive  him  of  the  use  of  any  tangible 
property,  and  because  he  has  no  tangible  property  in  the 
process  itself. 

The  language  of  the  Patent  Act  of  1839  :  was,  however 
different  from  that  of  the  Act  of  1870,  and  of  the  Revised 
Statutes,  on  the  point  treated  in  this  section.  The  earlier 
Act  contained  a  considerable  clause  which  is  not  in  either 
of  the  others,  and  which  induced  the  Supreme  Court  to 
decide  that  the  earlier  statute  applied  to  patents  for  pro- 
cesses, as  well  as  to  patents  for  things.*  The  reasoning  of 
Justice  BALDWIN,  in  the  case,  was  never  convincing  to  the 
present  textwriter.  It  was  spoken  of  by  Justice  STORY  as 
"  certainly  general ;"  3  and  Judge  WHEELER  has  well  said 
that  "  It  is  not  probable  that  McClurg  v.  Kingsland  would 
be  followed  beyond  cases  of  its  class,  upon  the  same  statute."4 
As  far  as  McClurg  v.  Kingsland  construed  the  Act  of  1839, 
and  applied  that  Act  to  the  very  case  then  at  bar,  it  is 
entitled  to  loyal  respect  and  obedience,  even  from  those 
who  cannot  follow  its  reasoning.  But  McClurg  v.  Kings- 
land  is  no  guide  to  the  meaning  of  the  present  statute  on 
the  subject,  because  that  statute  is  substantially  different 
from  the  one  construed  in  that  case,  and  because  the  rea- 
soning of  that  case  has  no  convincing  force  when  applied 
to  the. language  of  the  now  existing  statute. 

§  160.  Every  United  States  patent  is  in  general  co-exten- 
sive, in  point  of  the  territory  it  covers,  with  the  territory 
covered  by  the  jurisdiction  of  the  United  States.5  Every 
such  patent,  therefore,  covers  the  use  of  the  patented  thing 
in  or  under  the  tide-waters  of  the  United  States  ;  and  that, 

1  5   Statutes  at  Large,    Ch.    88,      408,  1844. 

Section  7,  p.  354.  4  Brickill  ®.  New  York,  5  Bann. 

2  McClurg  v.  Kingsland,  1  How-      &  Ard  547,  1880. 

ard.  202,  1843.  5  Revised  Statutes,  Section  4884. 

3  Pierson  v.  Screw  Co.  3   Story, 


CHAP.  VII.]  LETTERS  PATENT.  141 

too,  even  in  cases  where  the  government  has  granted,  to 
others  than  the  patentee,  the  exclusive  right  to  do,  at  a 
particular  place,  the  particular  thing  which  the  patented 
invention  is  adapted  to  accomplish.1  In  the  case  just  cited 
the  complainant  had  a  patent  on  a  certain  submarine  tele- 
graph cable  ;  and  the  defendant  had  a  grant  from  Congress, 
giving  it  the  sole  right,  for  fourteen  years,  to  lay,  construct, 
land,  maintain,  and  operate  telegraphic  cables  in  and  over 
the  waters,  reefs,  islands,  shores,  and  lands  over  which  the 
United  States  have  jurisdiction,  from  the  shores  of  Florida 
to  the  Island  of  Cuba.  Under  these  circumstances,  Justice 
BLATCHFOED  decided  that  the  defendant  acquired,  by  its 
grant,  no  right  to  use  the  patented  cables  of  the  complain- 
ant ;  and  he  intimated  that  the  complainant  acquired  by  its 
patent,  no  right  to  use  his  cables  between  Florida  and  Cuba. 
His  honor  supported  this  intimation  by  saying  that  no 
patent  confers  upon  its  owner  any  right  to  make  or  use  his 
invention  in  the  house  of  another ;  and  he  supported  his 
decision  by  saying  that  the  fact  just  mentioned  does  not 
confer  upon  another  than  the  patentee  any  right  to  make  or 
use  the  invention- of  the  latter  in  the  house  of  the  former. 

§  161.  No  United  States  patent  right  extends  to  the  mere 
use  of  the  patented  invention  on  any  foreign  ship  while 
temporarily  in  a  harbor  of  the  United  States  for  the  pur- 
poses of  commerce  ;  though  such  a  right  would  be  infringed 
by  making  or  selling  the  patented  article  on  board  any  foreign 
vessel  while  in  either  of  our  ports.2  United  States 
patent  rights  ex-tend  to  the  decks  of  United  States  ships, 
even  when  those  ships  are  on  the  high  seas,  as  fully  as  they 
extend  to  the  solid  earth  of  the  United  States.3 

§  162.  The  regular  duration  of  a  United  States  patent  for 
a  process,  machine,  manufacture,  or  composition  of  matter, 
was  fourteen  years  under  the  statutes  prior  to  that  of  1861; 
but  it  was  enacted,  in  Section  16  of  the  Patent  Act  of  March 


1  Colgate  v.  Ocean  Telegraph  Co.      196,  1856. 

17  Blatch.  310,  1879.  *  Gardner  ».  Howe,  2  Cliff.  464, 

2  Brown  v.  Duchesne,  19  Howard,      1865. 


142  LETTERS  PATENT.  [CHAP.  VII. 

2  of  that  year,  that  all  patents  thereafter  granted  should 
remain  in  force  for  seventeen  years  from  the  date  of  issue.1 
Section  22  of  the  consolidated  Patent  Act  of  1870  provided 
that  every  patent  should  grant  to  the  patentee,  his  heirs  or 
assigns,  for  the  term  of  seventeen  years,  the  exclusive  right 
to  make,  use,  and  vend  the  invention  covered  thereby.2 
Section  4884  of  the  Revised  Statutes  makes  the  same  pro- 
vision as  that  made  on  this  point  by  the  Act  of  1870.  The 
phrase  "every  patent"  is  not  to  be  understood  in  its  literal 
signification.  It  means  every  patent,  the  duration  of  which 
is  not  otherwise  prescribed  by  statute.  In  the  latter  cate- 
gory, design  patents  fall.  Such  patents  are  grantable 
for  fourteen  years,  or  for  seven  years,  or  for  three  years 
and  six  months,  as  the  applicant  may  in  his  application 
elect.3  In  the  same  category,  also,  fall  patents  for  inven- 
tions for  which  their  owners  previously  obtained  one  or 
more  foreign  patents.  United  States  patents  of  this  class 
cannot  be  granted  for  more  than  seventeen  years,  and  they 
generally  have  to  be  limited  to  some  shorter  length  of  time. 

§  163.  "  Every  patent  granted  for  an  invention  which  has 
previously  been  patented  in  a  foreign  country,  shall  be  so 
limited  as  to  expire  at  the  same  time  with  the  foreign  pat- 
ent, or,  if  there  be  more  than  one,  at  the  same  time  with 
the  one  having  the  shortest  term,  and  in  no  case  shall  it  be 
in  force  more  than  seventeen  years."4  Such  is  the  present 
statute  on  this  subject,  and  the  corresponding  provision  of 
the  Patent  Act  of  1870  was  substantially  the  same.5 

These  enactments  apply  only  to  cases  wherein  the  for- 
eign patent  was  taken  out  by  the  United  States  patentee,  or 
at  least  with  his  knowledge  and  consent.  No  foreign  pat- 
ent obtained  by  another,  without  that  knowledge  and  that 
consent,  after  the  inventor  made  his  invention,  and  before 


1  12  Statutes  at  Large,  Ch.  88,  3  Revised  Statutes,  Section  4931. 
Section  16,  p.  249.  4  Revised  Statutes,  Section  4887. 

2  16  Statutes  at  Large,  Ch.  230,  8  16  Statutes  at  Large,  Ch.  230, 
Section  22,  p.  201.  Section  25,  p.  201. 


CHAP.  VII.]  LETTERS  PATENT.  143 

the  United  States  patent  was  granted,  can  operate  to  limit 
the  duration  of  the  latter.1 

These  enactments  apply  to  a  case  where  a  foreign  patent 
was  granted  before  the  granting  of  the  corresponding  United 
States  patent,  even  if  the  foreign  patent  was  made  a  secret 
one  at  the  request  of  the  applicant  therefor  ;2  but  they  do 
not  apply  to  a  case  where  a  foreign  patent  was  dated  before 
the  granting  of  the  corresponding  United  States  patent,  but 
not  sealed  nor  published  till  afterward  ;3  though  they  do 
apply  to  a  case  where  the  United  States  patent  was  granted 
after  the  foreign  patent  was  sealed,  upon  an  application 
filed  before  that  event.4 

Whether  these  enactments  apply  where  the  invention 
claimed  in  the  United  States  patent  was  not  claimed  but 
only  described  in  the  prior  foreign  patent,  was  a  question 
which  was  once  decided  in  the  affirmative,5  and  once  in 
the  negative,6  but  is  now  settled  in  the  affirmative.7 

In  a  case  to  which  these  enactments  apply,  the  United 
States  patent  will  not  expire  with  the  first  term  of  the 
foreign  patent,  if  the  foreign  patent  is  extended  before  the 
expiration  of  its  first  term,  in  pursuance  of  a  statute  which 
was  in  force  when  the  United  States  patent  was  applied  for 
and  when  it  was  issued,  and  which  conferred  an  absolute 
right  to  such  an  extension,  and  if  the  extension  or  exten- 
sions of  the  foreign*  patent 'cover  a  continuous  space  of 

1  Kendrick  «.  Emmons,  2  Bann.  &      1894. 

Ard.  210,  1875.  4  Bate  Refrigerating  Co.  v.  Sulz- 

2  Gramme  Electrical  Co.  v.  Elec-  berger,  157  U.   S.  1,     1895;    Bate 
trie  Co.  17  Fed.  Rep.  838,  1883.  Refrigerating    Co.    v.    Gillett,    13 

3  Gold  &  Stock  Telegraph  Co.  ®.  Fed.  Rep.  553,  1882;  Gramme  Elec- 
Telegram   Co.   23   Fed.   Rep.  340.  trical  Co.  v.  Electric  Co.  17^  Fed. 
1885;  Emmerson  v.  Lippert,  81  Fed.  Rep.   838,    1883;    Edisou    Electric 
Rep.  911,  1887;  Seibert  Oil  Co.  v.  Light  Co.  v.  United  States  Electric 
Powell  Co.  35  Fed.  Rep.  591,  1888;  Lighting  Co.  35  Fed.  Rep.  135, 1888. 
Holmes  Alarm  Tel.  Co.    «.   Tele-  5  Commercial  Mfg.  Co.  ®.  Canning 
phone  Co.  42  Fed.  Rep.  228,  1890;  Co.  27  Fed.  Rep.  87,  1886. 
American  Bell  Telephone   Co.   ®.  6  Holmes  Protective  Co.  v.  Alarm 
Cushman,  57  Fed.  Rep.  843,  1893,  Co.  22  Fed  Rep.  341,  1884. 
Edison  Electric  Light  Co.  v.  War-  7  Commercial  Mfg.  Co.   v.  Fair- 
ing Electric  Co.  59  Fed.  Rep.  364,  bank  Co.  135  U.  S.  194,  1890. 


144  LETTERS  PATENT.  [CHAP.  VII. 

time.1  And  it  has  been  decided  in  several  Circuit  Courts, 
that  the  United  States  patent  will  not  expire  with  the  first 
term  of  the  foreign  patent,  if  the  foreign  patent  might  have 
been  extended  before  the  expiration  of  its  first  term,  in 
pursuance  of  a  statute  which  was  in  force  when  the  United 
States  patent  was  applied  for  and  when  it  was  issued,  and 
which  conferred  an  absolute  right  to  such  an  extension, 
whether  the  foreign  patent  was  actually  extended  or  not.2 
But  it  has  also  been  decided  on  the  Circuit,  that  where  the 
patentee  has  no  absolute  right  to  an  extension  of  the  fiflst 
term  of  his  foreign  patent,  no  such  extension  has  any  effect 
upon  the  duration  of  his  United  States  patent.3 

The  termination  of  a  foreign  patent,  prior  to  its  appointed 
end,  because  of  an  omission  of  the  patentee  to  do  -what  the 
foreign  laws  require  in  order  to  keep  it  in  force,  has  no  effect 
upon  the  duration  of  a  corresponding  United  States  patent.4 
Nor  will  any  such  effect  result  from  the  expiration  of  a  prior 
foreign  patent,  on  account  of  the  expiration  of  a  patent  of 
another  foreign  country  on  the  same  invention.5  But  where 
the  corresponding  foreign  patent  terminated  before  the 
United  States  patent  for  the  same  invention  was  issued,  the 
latter  is  void  ab  initio  ;6  though  a  repeal  ab  initio  of  a  for- 
eign patent  which  would  otherwise  limit  the  duration  of  a 
corresponding  United  States  patent,  restores  the  latter  to  its 
full  term  of  seventeen  years.7  •• 

It  is  not  necessary,  to  the  validity  of  a  United  States  pat- 
ent granted  for  an  invention  which  has  previously  been 
patented  in  a  foreign  country,  that  it  shall  be  so  limited  on 
its  face,  as  to  appear  to  expire  at  the  same  time  with  the 

1  Bate  Refrigerating  Co.  •».  Ham-      tective  Co.  v.  Alarm  Co.  21  Fed. 
mond,  129  U.  8.  151,  1889.  Rep.  458,  1884;  Paillard  v.  Bruno, 

2  Consolidated  Roller  Mill  Co.  v.      29  Fed.  Rep.  864,  1886. 

Walker,  43  Fed.   Rep.   581,  1890;  5  Edison  Electric  Light  Co.    «. 

Pohl  v.  Heyman,  58  Fed.  Rep.  568,  Perkins  Electric  Lamp  Co.  42  Fed. 

)893.  Rep.  327,  1890. 

3  Henry  ®.   Tool  Co.  3  Bann.  &  6  Huber  v.  Nelson  Mfg.  Co.  148 
Ard.  501,  1878.  U.  S.  275,  1893. 

4  Pohl  v.  Anchor   Brewing   Co.  7  Bate  Refrigerating  Co.  v.  Gil- 
134  U.  S.  381,  1890;  Holmes  Pro-  lett,  20  Fed.  Rep.  192,  1884. 


CHAP.  VII.]  LETTEES  PATENT.  145 

foreign  patent  which  limits  its  life.1  The  statute  is  satisfied 
when  the  courts  decline  to  enforce  it  after  the  expiration  of 
that  foreign  patent,  whether  or  not  it  appears  on  its  face  to 
be  so  limited.2 

And  the  duration  of  a  patent  should  never  be  limited 
because  of  the  expiration  of  a  foreign  patent,  if  there  is  any 
doubt  about  the  invention  covered  by  the  two  patents,  being 
substantially  the  same.3  But  differences  of  description  do 
not  necessarily  involve  substantial  differences  of  invention;4 
and  the  true  test  of  identity  consists  in  ascertaining  and 
deciding  whether  the  practice  of  what  is  described  in  the 
foreign  patent,  would  constitute  an  infringement  of  the 
United  States  patent.5 

The  law  set  forth  in  this  section  applies  to  no  patent 
which  was  originally  granted  prior  to  July  8,  1870 ;  and 
applies  to  no  reissue  of  any  patent  which  was  originally 
granted  before  that  date,  even  though  the  reissue  itself  was 
granted  after  that  date.6  The  duration  of  such  patents, 
where  they  were  granted  for  inventions  which  had  previ- 
ously been  granted  in  some  foreign  country,  was  governed 
by  certain  earlier  statutes  which  it  is  now  in  order  to 
explain. 

§  164.  Section  8  of  the  Patent  Act  of  1836  provided  that 
nothing  therein  contained  should  be  construed  to  deprive 
any  original  and  true  inventor  of  the  right  to  a  patent  for 
his  invention,  by  reason  of  his  having  previously  taken  out 
letters  patent  therefor  in  a  foreign  country,  and  the  same 
having  been  published,  at  any  time  within  six  months  next 


1  Telephone  Cases,  126  U.  S.  572,  Co.  47  Fed.  Rep.  52,  1891. 

1888;    Bate    Refrigerating    Co.   v.  4  Commercial  Mfg.  Co.  ».  Fair- 
Hammond,  129  U.  8.  151,  1889.  bank  Co.  135  U.  S.  192,  1890. 

2  New    American    File    Co.     v.  5  Commercial  Mfg.   Co.  v.  Fair- 
Nicholson  File  Co.  8  Fed.  Rep.  816,  bank  Co.  185  U.  S.  194, 1890;  Ac- 
1881;  Canan  v.  Mfg.  Co.   23  Fed.  cumulator  Co.  v.  Julien  Electric  Co. 
Rep.  185, 1885.  57  Fed.  Rep.  609,  1893. 

3  Brush  Electric  Co.    v.    Julien  6  Badische  Anilin  and  Soda  Fab- 
Electric  Co.  41  Fed.  Rep.  696, 1890;  rik  t>.  Hamilton  Mfg.  Co.  3  Bann. 
Brush  Electric  Co.  v.  Accumulator  &  Ard.  285,  1878. 


146  LETTERS  PATENT.  [CHAP.  VII. 

preceding  the  filing  of  his  specification  and  drawings.1 
Section  6  of  the  Patent  Act  of  1839  provided  that  no  per- 
son should  be  debarred  from  receiving  a  patent  for  any 
invention,  as  provided  in  the  Act  of  1836,  by  reason  of  the 
same  having  been  patented  in  a  foreign  country  more  than 
six  months  prior  to  his  application,  provided,  among  other 
things,  that  every  such  patent  should  be  limited  to  the 
term  of  fourteen  years  from  the  date  or  publication  of  such 
foreign  letters  patent.2  The  effect  of  these  enactments  was 
to  allow  an  inventor  to  take  out  a  patent  in  the  United 
States,  for  an  invention  which  he  had  previously  patented 
in  a  foreign  country,  no  matter  how  long  previously  that 
foreign  patent  was  granted  ;3  but  the  duration  of  the 
United  States  patent  was  limited  to  the  term  of  fourteen 
years  from  the  date  or  publication  of  the  foreign  patent, 
unless  the  United  States  patent  was  applied  for  within  six 
months  after  the  foreign  patent  was  taken  out,  and  within 
six  months  after  the  foreign  patent  was  published.  This 
law  applied  only  to  cases  where  the  foreign  patent  was 
published,4  or,  if  it  was  a  British  patent,  was  sealed,5 
before  the  United  States  patent  was  applied  for.  It  did  not 
therefore,  affect  any  United  States  patent  for  an  invention 
which  was  patented  in  a  foreign  country  while  the  applica- 
tion for  the  United  States  patent  was  pending  in  the  Patent 
Office.  It  was  not  necessary  under  the  law  stated  in  this 
section,  any  more  than  it  is  necessary  under  the  law  stated 
in  the  last,  that  a  patent  should  be  limited  on  its  face,  so 
as  to  appear  to  expire  when  it  really  ceased  to  be  in  force. 
"Whether  so  limited  or  not,  the  courts  would  limit  it  to  its 
legal  life,  when  called  upon  to  enforce  it  after  the  end  of 
that  life  ;  but  its  validity  for  the  term  of  fourteen  years 
from  the  date  of  the  foreign  patent,  was  unaffected  by  the 


1  5  Statutes  at  Large,    Ch.  357,  4  French  v.  Rogers,  1  Fisher,  136, 
Section  8,  p.  121.  1851. 

2  5  Statutes  at  Large,  Ch.  88,  Sec-  5  Gold  &  Stock  Telegraph  Co.  ®. 
tion  6,  p.  354.  Telegram  Co.   23  Fed.   Rep.   343, 

3De    Florez     «.     Raynolds,    17  1885. 
Blatch.  444,  1880. 


CHAP.  VII.]  LETTERS  PATENT.  147 

fact  that  on  its  face  the  United  States  patent  purported  to 
run  for  fourteen  years  from  its  own  date.1 

§  165.  Section  16  of  the  Patent  Act  of  March  2,  1861, 
provided  that  all  patents  thereafter  granted  should  remain 
in  force  for  the  term  of  seventeen  years  from  the  date  of 
issue  ;  and  the  Supreme  Court  has  decided  that  this  enact- 
ment modified  the  statute  of  1839  precisely  as  it  would 
have  done  had  it  expressly  substituted  the  word  "  seven- 
teen "  for  the  word  "  fourteen  "  in  the  earlier  statute  ;  thus 
making  it  read  :  "  every  such  patent  shall  be  limited  to  the 
term  of  seventeen  years  from  the  date  or  publication  of 
such  foreign  letters  patent."2  The  law  which  was  estab- 
lished on  the  subject  by  the  Patent  Act  of  1836,  as  modified 
by  the  Patent  Act  of  1839,  was  still  further  modified  to  that 
extent  by  the  Patent  Act  of  March  2,  1861 ;  and  as  thus 
modified  it  is  the  law  which  governs  the  point,  in  respect 
of  patents  granted  between  the  latter  date  and  July  8, 1870. 

§  170.  The  terms  of  all  United  States  patents  begin  at 
their  respective  dates.3  Those  dates  are  selected  by  the 
Commissioner  of  Patents,  but  they  cannot  be  later  than  six 
months  after  the  time  at  which  the  respective  applications 
are  allowed  ;4  and  cannot  be  earlier  than  the  time  of  *such 
allowance  :  that  is  to  say,  patents  cannot  now  be  ante- 
dated.5 

Section  8  of  the  Patent  Act  of  1836  provided  that  when- 
ever the  applicant  should  request  it,  the  patent  should  take 
date  from  the  time  of  the  filing  of  the  specification  and 
drawings,  not  however  exceeding  six  months  prior  to  the 
actual  issuing  of  the  patent.6  This  continued  to  be  the  law 
for  nearly  a  quarter  of  a  century,  and  patents  so  antedated 
conferred  rights  of  action  upon  the  patentees;  for  infringe- 


1  O'Reilly  v.  Morse,  15  Howard,  4  Revised  Statutes,  Section  4885. 
62.  1853.  5  De    Florez    v.    Raynolds,     17 

2  Siemens'  Adm'r  v.  Sellers,  123  Blatch.  444,  1880. 

U.  S.  276,  1887.  6  5  Statutes  at  Large,  Ch.   357, 

3  Rein  v.  Clayton,  37  Fed.  Rep.  Section  8,  p.  121. 
355,  1889. 


148  LETTEES  PATENT.  [CHAP.  VII. 

ments  occurring  after  their  respective  dates,  and  before  the 
respective  days  of  their  actual  issue.1  Section  16  of  the 
Patent  Act  of  March  2,  1861,  provided  a  change  in  this  law  : 
provided  that  thereafter  the  terms  of  patents  should  begin 
with  the  dates  of  their  respective  issue,  and  such  has  ever 
since  been  the  law  on  the  subject.2  In  actual  practice,  pat- 
ents are  now  dated  and  issued  on  the  third  or  the  fourth 
Tuesday  after  the  applicant  pays  the  final  Patent  Office  fee. 
And  all  the  patents  which  are  issued  in  one  day  are  contem- 
poraneous, regardless  of  the  order  of  the  numbers  which 
they  respectively  receive.3 

§  171.  The  grantee  of  the  government  in  cases  of  letters 
patent  for  inventions  may  be  the  inventor  himself  ;  4  or  his 
assignee ; 5  or  an  assignee  of  an  assignee  ; 6  or  an  assignee 
who  has  assigned  the  invention  ; 7  or  a  guardian  of  an  insane 
inventor ; 8  or  if  an  inventor  dies  before  any  patent  is 
granted  for  his  invention,  the  right  to  obtain  the  patent 
devolves  on  his  executor  or  administrator,  in  trust  for  the 
heirs  at  law  of  the  deceased,  in  case  he  shall  have  died 
intestate ;  or  if  he  shall  have  left  a  will  disposing  of  the 
invention,  then  in  trust  for  his  devisees.9  In  this  last  case 
the  patent  may  be  granted  to  the  executor  by  his  proper 
personal  name,  without  any  declaration  that  he  takes  in  his 
representative  capacity  ; 10  and  the  same  thing  is  equally 
true  in  cases  where  the  patent  is  granted  to  an  adminis- 
trator. 


1  Burdett  v.  Estey,  3  Fed.   Rep.  v.  Edison  Electric  Light  Co.  25  Fed. 
566,  1880.  Rep.  719,  1885;  Consolidated  Elec- 

2  12  Statutes  at  Large,   Ch.  88,  trie  Light  Co.  v.  McKeesport  Light 
Section  16,  p.  249.  Co.  34  Fed.  Rep.  335,  1888. 

3  Electrical  Accumulator  Co.  ».  8  Whitcomb  v.  Coal  Co.  47  Fed. 
Brush  Electric   Co.   52  Fed.  Rep.  Rep.  658,  1891. 

137, 1892.  »  Revised  Statutes,  Section  4896. 

4  Revised  Statutes,  Section  4886.  10  Stimpson  v.  Rogers,  4  Blatch. 

5  Revised  Statutes,  Section  4895.  336, 1859;  Northwestern  Fire  Extin- 

6  Selden  v.  Gas  Burner  Co.   19  guisher  Co.  «.  Philadelphia  Extin- 
Blatch.  544,  1881.  guisher  Co.   1   Bann.  &  Ard.  177, 

7  Consolidated  Electric  Light  Co.  1874. 


CHAP.  VII.]  LETTEBS  PATENT.  149 

Where  an  inventor  applies  for  a  patent  to  be  issued  to 
himself,  and  then  dies  before  any  patent  is  granted ;  the 
patent  may  be  granted  in  his  name  as  patentee,  and  will  be 
valid  notwithstanding  his  prior  death  ;  and  the  title  thereto 
will  vest  in  his  executor  or  administrator,  if  there  is  any, 
whoever  he  may  be ;  and  if  there  is  no  executor  or  admin- 
istrator, the  title  will  ultimately  vest  in  the  heirs  or  legatees 
of  the  inventor,  whoever  they  may  be.1 

Where  an  inventor  assigns  his  invention  before  making 
an  application  for  a  patent,  and  then  makes  such  an  appli- 
cation, coupled  with  a  request  that  the  patent  be  granted 
to  the  assignee,  and  accompanied  with  an  entry  of  the 
assignment  on  the  records  of  the  Patent  Office,  and  then 
dies  before  any  patent  is  granted  ;  there  appears  to  be  no 
reason  why  the  patent  should  not  be  granted  to  the  assignee, 
though  the  statute  literally  provides  that  in  all  cases  where 
the  inventor  dies  before  the  patent  is  granted,  the  right  to 
the  patent  devolves  on  his  executor  or  administrator  in 
trust  for  his  heirs  or  devisees.2  But  this  statute  must 
receive  a  reasonable  construction,  and  it  is  not  reasonable 
to  hold  that  the  death  of  an  inventor,  who  has  sold  and 
assigned  his  inchoate  right  to  a  patent,  should  operate  to 
divest  his  assignee  of  that  right,  and  devolve  it  upon 
another  person,  in  trust  for  still  another  party.  Nor  is 
there  any  propriety,  in  such  a  case,  in  granting  the  patent 
to  the  executor  or  administrator,  on  the  theory  that  he  will 
take  as  trustee  for  the  assignee.  The  assignee  requires  no 
trustee,  for  his  incohate  title,  is  a  legal,  and  not  a  merely 
equitable  one  ; 3  and  the  executor  or  administrator,  if  he 
takes  at  all,  must  take  as  trustee  for  the  heirs  or  devisees 
of  the  inventor. 

Where  an  inventor  assigns  his  invention  and  dies  before 
making  any  application  for  a  patent,  a  difficulty  arises  for 
which  the  statute  affords  no  clear  solution.  In  such  a  case, 


1  De  La  Vergne  Machine  Co.  v.         »  Hendrie  v.  Sayles,  98  U.  S.  549, 
Featherstone,  147  U.  S.  211,  1893.      1878. 

2  Revised  Statutes,  Section  4896. 


150  LETTERS  PATENT.  [CHAP.  VII. 

it  is  provided  that  the  application  must  be  made  and  sworn 
to  by  the  executor  or  administrator,  for  an  assignee  cannot 
apply  for  a  patent  except  on  the  oath  of  the  inventor  him- 
self.1 It  is  also  provided,  that  where  an  executor  or  admin- 
istrator applies  for  a  patent,  he  must  take  that  patent,  if 
granted,  in  trust  for  the  heirs  or  devisees  of  the  inventor.2 
Now  under  these  circumstances,  the  law  must  do  one  of 
three  things.  It  must  ignore  this  last  provision,  and  hold 
that  the  executor  or  administrator  takes  in  trust  for  the 
assignee  ;  or  it  must  impose  a  trust  upon  a  trust,  by  holding 
that  the  executor  or  administrator  takes  in  trust  for  the 
heirs  or  devisees,  and  they  take  in  trust  for  the  assignee ; 
or  it  must  deprive  the  assignee  of  his  right  altogether. 
The  first  alternative  flies  in  the  face  of  the  statute,  and  the 
third  flies  in  the  face  of  justice.  The  second  is  consistent 
with  conscience,  and  can  probably  be  adopted  and  enforced 
by  courts  of  equity. 

§  172.  Letters  patent  are  documents  consisting  of  the 
grant  and  the  specification ;  and  where  drawings  form  a 
part  of  the  application,  they  also  form  a  part  of  the  letters 
patent.  The  grant  is  a  paper,  issued  in  the  name  of  the 
United  States,  under  the  seal  of  the  Patent  Office,  and 
signed  by  the  Secretary  of  the  Interior,  or  under  his  direc- 
tion by  one  of  the  Assistant  Secretaries  of  the  Interior,3  and 
countersigned  by  the  Commissioner  of  Patents.  It  contains 
a  short  title  of  the  invention,  and  purports  to  grant  to  the 
patentee,  his  heirs  or  assigns,  for  the  term  of  seventeen 
years,  the  exclusive  right  to  make,  use,  and  vend  the  inven- 
tion, throughout  the  United  States  and  the  territories 
thereof  ;  and  it  refers  to  the  specification,  for  the  particulars 
of  the  invention  covered  by  the  grant,4  and  each  of  the 
three  rights  granted  by  letters  patent  is  a  separate  substan- 
tive right.5 

1  Revised  Statutes,  Sections  4895,  4  Revised  Statutes,  Sections  4883, 
4896.  4884. 

2  Revised  Statutes,  Section  4896.  5  Adams  ®.  Burke,  17  Wall.  458, 

3  25  Statutes  at  Large,  Ch.  15,  p.  1873;  Tuttle  v.  Matthews.  28  Fed. 
40.  Rep.  98,  1886. 


CHAP.  VII.]  LETTERS  PATENT.  151 

Letters  patent  are  valid  where  the  grant  is  signed  by  an 
Acting  Secretary  of  the  Interior,  or  countersigned  by  an 
Acting  Commissioner  of  Patents  ;  and  letters  patent,  so 
signed,  are  admissible  in  evidence  without  any  pleading  or 
proof  of  the  title  of  such  officers  to  their  respective  offices. 
Courts  take  judicial  notice  of  the  persons  who  preside  over 
the  departments  or  bureaus  of  the  government,  whether 
permanently  or  temporarily ;  and  the  production  of  their 
commissions  is  not  necessary  to  support  their  official  acts.1 
But  if  letters  patent  are  issued  without  any  signature  of 
the  Secretary  of  the  Interior,  or  of  an  Acting  or  Assistant 
Secretary  of  the  Interior,  the  omission  is  fatal  to  the  validity 
of  those  letters  patent ;  and  the  same  effect  would  result 
from  an  omission  of  the  counter-signature  of  the  Commis- 
sioner of  Patents,  unless  an  Acting  Commissioner  of  Pat- 
ents should  countersign  in  his  stead.2  Such  an  error  may, 
however,  be  corrected  by  affixing  the  omitted  signature  ; 
but  such  a  correction  will  affect  only  the  future,  and  not 
the  past,  portion  of  the  term  of  the  patent.3  A  misnomer 
of  the  patentee,  in  a  grant,  does  not  invalidate  the  patent, 
if  he  can  be  identified  by  means  of  any  description  which 
the  letters  patent  may  contain.4  If  Uie  letters  patent  con- 
tains no  means  for  correcting  the  misnomer,  it  may  be 
corrected  by  the  proper  officers  of  the  government, whenever 
those  officers  become  convinced  of  the  mistake.5 

But  regularly  executed  letters  patent  cannot  be  altered  in 
character  by  the  Commissioner  of  Patents,  except  after  a 
surrender,  and  by  means  of  a  reissue,  and  any  such  altera- 
tion otherwise  made,  is  void  for  want  of  jurisdiction  in  the 
Commissioner  to  make  it.6  But  where  an  alteration  has 


1  York  and  Maryland  Line  Rail-  Co.   «.    Philadelphia    Extinguisher 
road  Co.  v.  Winans,  17  Howard,  80,  Co.  1  Bann.  &  Ard.  177,  1874. 
1854.  5  Bell  v.  Hearne,  19  Howard,  262, 

2  Marsh  v.  Nichols,  128  U.  S  605,  1856. 

1888.  6  Edison  Electric  Light  Co.  v.  U. 

3  Marsh  «.  Nichols,  128  U.  S.  605,  S.   Electric  Lighting  Co.   52  Fed. 
1888.  Rep.  312,  1892. 

4  Northwestern  Fire  Extinguisher 


152  LETTEES  PATENT.  [CHAP.  VII. 

been  actually  made  by  the  Commissioner  of  Patents,  at  the 
request  of  the  patentee,  and  where  some  party  has  relied 
upon  the  validity  of  that  alteration,  to  the  extent  of  embark- 
ing in  business  because  of  it,  the  patentee  may  be  estopped 
from  denying  that  validity,  as  against  that  particular  party.1 

§  173.  The  word  "  specification,"  whenever  it  is  used  in 
the  statute  without  the  word  "  claim,"  covers  both  the  claim 
and  the  description  ;  and  whenever  it  is  used  with  the  word 
claim,  it  covers  the  description  only.B  The  first  is  its  more 
general  meaning,  and  to  avoid  confusion  it  is  never  used  in 
any  other  sense  in  this  book.  The  proper  characteristics 
of  specifications  are  herein  explained  by  explaining  the 
proper  characteristics  of  descriptions  and  claims,  which  are 
the  component  parts  of  specifications. 

§  174.  The  description  of  the  invention,  which  forms  a 
part  of  every  specification,  is  required  to  set  forth  that 
invention,  and  the  manner  and  process  of  making  and  using 
it,  in  such  full,  clear,  concise,  and  exact  terms  as  to  enable 
any  person  skilled  in  the  art  or  science  to  which  it  apper- 
tains, or  with  which  it  is  most  nearly  connected,  to  make 
and  use  the  same  ;  and  in  case  of  a  machine,  the  description 
is  required  to  explain  the  principle  thereof,  and  the  mode 
of  applying  that  principle  which  the  inventor  believes  to  be 
the  best.3  The  phrase  "  any  person  skilled  in  the  art  or 
science  "  is  not  confined  to  the  most  eminent  scientists,  nor 
the  most  able  experts  in  that  science  or  art ;  but  it  also 
indicates  persons  whose  skill  may  sbop  short  of  the  highest 
excellence.4 

It  is. not  necessary  that  the  description  should  be  intelli- 
gible to  every  intelligent  man,  nor  to  every  skilful  mechanic. 
If  it  can  be  understood  by  those  who  possess  full  knowl- 
edge of  the  prior  inventions  in  the  same  department  of  art 
or  science,  it  is  full,  clear,  concise,  and  exact  enough  to 


1  Edison    Electric   Light  Co.   v.  1880, 

Buckeye  Electric  Co.  59  Fed.  Rep.  3  Revised  Statutes,  Section  4888. 

699,  1894.  4  Tannage  Patent  Co.  ».  Zahn,  66 

2  "Wilson  v.  Coon,  18  Blatch.  532,  Fed.  Rep.  989,  1895. 


CHAP.  VII.]  LETTERS  PATENT.  153 

comply  with  the  statute.1  In  explaining  this  point  of  law, 
Justice  BRADLEY,  in  the  first  cited  decision,  used  a  particu- 
larly felicitous  illustration.  His  Honor  said  :  "When  an 
astronomer  reports  that  a  comet  is  to  be  seen  with  the  tele- 
scope, in  the  constellation  of  Auriga,  in  so  many  degrees 
of  declination,  and  so  many  hours  and  minutes  of  right 
ascension,  it  is  all  Greek  to  the  unskilled  in  science ;  but 
other  astronomers  will  instantly  direct  their  telescopes  to 
the  very  point  in  the  heavens  where  the  stranger  has  made 
his  entrance  into  our  system.  They  understand  the  lan- 
guage of  their  brother  scientist.  If  a  mechanical  engineer 
invents  an  improvement  on  any  of  the  appendages  of  a 
steam-engine,  such  as  the  valve-gear,  the  condenser,  the 
steam-chest,  the  walking-beam,  the  parallel  motion,  or  what 
not,  he  is  not  obliged,  in  order  to  make  himself  understood,  to 
describe  the  engine,  nor  the  particular  appendage  to  which  the 
improvement  refers,  nor  its  mode  of  connection  with  the 
principal  machine.  These  are  already  familiar  to  others 
skilled  in  that  kind  of  machinery.  He  may  begin  at  the 
point  where  his  invention  begins,  and  describe  what  he  has 
made  that  is  new,  and  what  it  replaces  of  the  old." 

These  observations  are  particularly  applicable  to  descrip- 
tions of  machinery;  but  they  also  suggest,  the  true  princi- 
ples on  which  to  judge  of  the  sufficiency  of  descriptions  of 
processes,  manufactures,  and  compositions  of  matter.2  Rel- 
evant to  this  last  class  of  subjects  of  patents,  it  has  been 
held  that  descriptions  should  state  the  component  parts 
thereof,  and  the  proportions  in  which  they  are  to  be  mixed 
or  combined,  and  should  do  this  with  clearness  and  pre- 
cision, and  should  not  leave  the  public  to  ascertain  any 
such  fact  by  experiment.3  But  where  proportions  must 
vary  with  circumstances,  a  descrip'tion  of  an  invention  is 


1  Loom  Co.  v.  Higgins,  105  U.  S.  2  Seabury  t>.  Am  Ende,  152  U.  S. 

580,  1881;    Celluloid    Mfg.   Co.   v.  567,  1894. 

Russell,  37  Fed.  Rep.  679,  1889;  La-  3  Wood  «.  Underbill,  5  Howard, 

lance  <fc  Grosjean  Mfg.  Co.  0.  Hab-  1, 1847;  Tyler  v.  Boston,  7  Wallace, 

erman  Mfg.  Co.  55  Fed.  Rep.  296,  327,  1868. 
1893. 


154  LETTERS  PATENT.  [CHAP.  VII. 

sufficient,  if  it  states  the  proportions  proper  under  ordinary 
circumstances,  and  points  out  the  direction  in  which  they 
must  be  varied  when  circumstances  are  changed.1  And  in 
the  case  of  an  article  of  manufacture,  where  proportion  is 
important  to  operativeness,  the  proper  proportions  may  be 
indicated  in  any  way  that  is  substantially  correct,  and  need 
not  be  stated  mathematically.8 

§  175.  An  inventor  need  not  explain  in  his  description,  or 
know  in  point  of  fact,  what  laws  of  nature  those  are  which 
cause  his  invention  to  work  ;3  nor  is  a  patent  void  on  the 
ground  that  the  principle  of  the  invention  is  not  fully  under- 
stood ;  or  if  understood  by  any  one,  not  understood  alike  by 
all.4  Neither  is  any  description  insufficient  in  the  eye  of  the 
law,  on  account  of  any  mere  errors  it  may  be  found  to  contain, 
where  those  errors  would  at  once  be  detected  and  their  reme- 
dies be  known,  by  any  person  skilled  in  the  art,  when  making 
specimens  of  the  invention  set  forth,  or  when  practicing 
that  invention,  if  that  invention  is  a  process;5  nor  where  such 
errors  consist  in  mistaken  statements  of  immaterial  facts  ;6 
nor  where  such  errors  relate  to  the  degree  of  efficiency  of 
the  invention.7  Nor  need  a  description  state  every  use  to 
which  the  described  and  claimed  invention  is  applicable,  in 
order  to  cover  every  such  use.8  Neither  is  it  necessary  in 
a  description  in  a  patent  for  a  process  to  set  forth  all  the 
modes  in  which  that  process  may  be  performed,  nor  all  the 
kinds  of  apparatus  which  may  be  used  in  performing  it,  in 
order  to  cover  that  process  with  the  patent.  It  is  enough  to 
describe  one  particular  mode  and  one  particular  apparatus 


1  Consolidated  Valve  Co.  v.  Valve  61  Fed.  Rep.  297,  1894. 

Co.  113  U.  S.  177,  1884.  5  Singer  v.  Walmsley,  1  Fisher, 

2  Edison  Electric  Light  Co.'v.  U.  559,  1860;  Kendrick  «.  Emmons,  2 
S.  Electric  Lighting  Co.  52  Fed.  Bann.  &  Ard.  210,  1875. 

Rep.  309,  1892.  6  Maryland  Hominy  Co.  «.  Dorr, 

3  Saint    Louis  Stamping    Co.   v.  46  Fed.  Rep.  776,  1891. 

Quinby,  4  Bann.  &  Ard.  195,  1879;  7  Michaels  «.  Roessler,   34  Fed. 

Haffcke  v.  Clark,  46  Fed.  Rep.  770,  Rep.  325,  1888. 

1891;   Dixon-Woods  Co.  v.  Pfeifer,  »  Pike  v.   Potter,  3    Fisher,    55, 

55  Fed.  Rep.  395,  1893.  1859. 

4  Knickerbocker  Co.  v.  Rogers, 


CHAP.  VII.]  LETTERS  PATENT.  155 

by  means  of  which  the  process  may  be  performed  with 
at  least  some  beneficial  result.1  Nor  is  a  description 
fatally  defective  merely  because  it  omits  to  mention  some- 
thing which  contributes  only  to  the  degree  of  benefit,  pro- 
vided the  invention  will  work  beneficially  without  it.2  But 
the  omission  of  anything  absolutely  material  to  the  utility 
of  the  invention  described,  is  a  fatal  defect  in  a  description,3 
unless  that  omission  would  naturally  be  supplied  by  any 
person  skilled  in  the  art  when  making  the  invention,  if  it 
be  a  thing,  or  when  using  it,  if  it  be  a  process.  Accord- 
ingly, it  has  been  held  that  where  one  element  of  a  new 
combination  covered  by  a  patent  must  have  a  certain  form 
in  order  to  operate  in  that  combination,  and  where  another 
form  of  that  element  is  known  to  persons  skilled  in  the  art  ; 
a  description  is  insufficient  which  merely  states  that  such 
old  element  is  a  part  of  the  combination,  without  saying  or 
showing  which  of  its  known  forms  is  applicable  to  the  case.4 
On  the  other  hand,  no  excess  of  description  is  injurious  to 
the  validity  of  a  patent,  unless  the  redundant  matter  was 
introduced  with  fraudulent  intention.5 

§  176.  The  claim  or  claims  of  a  specification  are  neces- 
sarily inserted  in  order  to  conform  to  the  statutory  require- 
ment that  the  patentee  shall  particularly  point  out  and 
distinctly  claim  the  part,  improvement,  or  combination 
which  he  claims  as  his  invention.6  A  distinct  and  formal 
claim  is  necessary  to  ascertain  the  scope  of  a  patented  in- 
vention,7 and  a  patent  grants  no  exclusive  right,  except  to 
what  is  thus  distinctly  claimed.8 

A  claim  covers  and  secures  a  process,  a  machine,  a  man- 
ufacture, or  a  composition  of  matter,  and  never  the  function 

1  Tilghman  «.  Proctor,  102  U.  S.      Ard.  565,  1880. 

728, 1880;  Pittsburgh  Reduction  Co.  «  Sewall  v.  Jones,  91   U.  8.  186, 

v.  Cowles  Co.  55  Fed.  Rep.   816,  1875. 

1893;   Rapid  Service  Store  Co.  v.  «  Revised  Statutes,  Section  4888. 

Taylor,  43  Fed.  Rep.  251,  1890.  7  Grant  «.  Walter,  148  U.  S.  554, 

2  Sewall  v.  Jones,  91  U.  S.  185,  1893. 

1875.  »  Ashton  Valve  Co.  v.  Muffler  Co. 

3  Carr  v.  Rice,  1  Fisher,  204, 1856.      8  U.  S.  App.  226,  1893. 

4  Schneider  <o.  Thill,  5  Bann.  & 


156  LETTERS  PATENT.  [CHAP.  VII. 

or  result  of  either.1  A  claim  may  cover  the  entire  process, 
machine,  manufacture,  or  composition  of  matter,  which  is 
set  forth  in  the  description,  or  it  may  cover  such  parts,  or 
such  sub-processes,  or  such  combinations  as  are  new  and 
useful  inventions;  and  the  specification  may  contain  a 
claim  for  the  whole,  and  other  claims  for  separate  parts, 
and  still  other  claims  for  separate  sub-processes  or  combi- 
nations.2 And  the  subject  of  a  claim  needs  not  to  be  opera- 
tive alone,3  for  utility  is  justly  ascribed  to  things  which 
have  their  use  in  co-operating  with  other  things  to  perform 
a  useful  work.  But  in  order  to  be  sustained,  each  claim 
must  be  able  to  withstand  the  tests  of  invention,  of  novelty, 
and  of  utility,  which  are  stated  in  the  second,  third,  and 
fourth  chapters  of  this  book,  respectively. 

All  claims  are  required  to  be  specific,  so  that  the  public 
may  know  what  they  are  prohibited  from  doing  during  the 
existence  of  the  patent,  and  what  they  are  to  have  at  the 
end  of  the  term,  as  a  consideration  for  the  grant.4  The 
necessary  degree  of  particularity  in  claims  may  be  reached  in 
various  modes.  Where  the  invention  is  an  entire  machine, 
the  claim  is  sufficient  if  it  is  clearly  co-extensive  with  the 
machine ;  and  where  the  invention  is  a  part  of  a  machine 
or  manufacture,  that  part  must  be  clearly  indicated  in  the 
claim  which  covers  it.5  Claims  for  combinations  of  a  plu- 
rality of  the  described  devices,  but  less  than  all  of  them, 
should  use  the  word  "  combination,"  and  should  state  the 
devices  of  which  it  is  composed.6  But  though  this  degree 


1  Corning  v.  Burden,  15  Howard,  Fed.  Rep.  915,  1884;  Rapid  Service 
252,   1853;    O'Reilly  v.    Morse,   15  Store  Co.  •».  Taylor,  43  Fed.  Rep. 
Howard,  62,  1853;  Carver  v.  Hyde,  251,  1890;    Roberts  «.  Nail  Co.  53 
16  Peters,  513,  1842;    Le   Roy  ».  Fed.  Rep.  920,  1892;   Holloway  v. 
Tatham,  14  Howard,  156,  1852.  Dow,  54  Fed.  Rep.  516,  1893. 

2  Railroad  Co.  v.  Dubois.  12  Wai-  4  Brooks  v.  Fiske,    15   Howard, 
lace,  47,  1870;    National  Machine  212,  1853;  Buffington's  Iron  Bldg. 
Co.  v.  Thorn,   25  Fed.   Rep.   500,  Co.  v.  Eustis,  65  Fed.  Rep.  807, 1895. 
1885.  5  Seymour  v.  Osborne,  11   Wal- 

3  Deering  v.  Winona  Harvester  lace,  516,  1870. 

Works,  155  U.  S.  302,  1894;  Han-  «  Brown  Mfg.  Co.  ®.  Bradley  Mfg. 

cock  Inspirator  Co.   ».  Jenks,  21  Co.  51  Fed.  Rep.  226,  1892. 


CHAP.  VII.]  LETTEES  PATENT.  157 

of  obvious  certainty  is  highly  desirable  in  a  combination 
claim,  it  is  not  absolutely  necessary  to  the  validity  of  such 
an  one ;  for  a  claim  may  declare  that  it  covers  so  much  of 
the  described  mechanism  as  effects  a  particular  specified 
result,  withoiit  specifying  those  parts  themselves.  In  such 
a  case  it  is  a  question  of  fact  to  be  determined  in  court,  if 
necessary,  which  parts  those  are  which  effect  that  result 
and  are  therefore  covered  by  the  claim.1  So,  also,  two  or 
more  claims  in  substance  may  sometimes  be  combined  in 
one  claim  in  form.2  This  may  be  accomplished  in  different 
ways,  and  among  others  by  inserting  in  the  claim  the  words 
"with  or  without"  before  the  name  or  other  designation  of 
one  or  more  of  the  enumerated  parts  of  the  process,  ma- 
chine, combination,  manufacture,  or  composition  of  matter 
covered  by  that  claim.3  The  claim  of  the  Charles  Good- 
year rubber  patent  had  this  characteristic.  It  was  a  claim 
for  vulcanized  India  rubber,  whether  with  or  without  other 
ingredients,  chemically  altered  by  the  application  of  heat, 
substantially  as  described.4  But  a  process  and  its  product, 
though  they  may  be  secured  by  separate  claims  in  one 
patent,  cannot  be  covered  by  one  claim.5 

§  177.  Letters  patent  may  be  valid  as  to  one  or  more 
claims  while  being  invalid  as  to  one  or  more  other  claims 
in  the  same  specification.6  And  where  a  patent  contains 
two  claims  which  are  alike,  except  that  the  narrower  one  of 
them  calls  for  an  unpatentable  addition  to  what  is  called 
for  by  the  other,  the  narrower  claim  is  void.7  But  two 
claims  which  may  appear  to  be  alike  will,  if  practicable,  be 
construed  to  differ  rather  than  agree,  because  there  is  a 


1  Silsby  v.  Foote,  14  Howard.  218,  4  Rubber  Co.  v.  Goodyear,  9  Wal- 
1852;  Fay  v.  Cordesman,  109  U.  S.  lace,  795,  1869. 

420,  1883 ;   Hoe  v.  Knap,   27  Fed.  5  Durand  v.  Schulze,  61  Fed.  Rep. 

Rep.  208  1886.  820,  1894. 

2  Telephone  Cases,  126  U.  S.  537,  •  Russell  0.  Place,  94  U.  S.  606, 
1888.  1876. 

3  Tuck  v.  Bramhill,  6  Blatch.  95,  7  Featherstone  v.   Cycle  Co.   53 
1868.  Fed.  Rep.  116,  1892. 


158  LETTERS  PATENT.  [CHAP.  VII. 

presumption  that  no  applicant  will  do  so  useless  and  inex- 
pedient an  act  as  to  repeat  a  claim.1 

Letters  patent  which  contain  a  needless  multiplication  of 
nebulous  claims,  calculated  to  mislead  the  public,  are  void 
for  that  reason,  if  for  no  other.2  This  word  "  calculated  " 
is  the  word  used  by  the  justice  who  announced  the  opinion 
of  the  Supreme  Court  upon  the  point.  It  is  itself  some- 
what nebulous,  for  it  is  questionable  whether  it  means  apt, 
or  means  intended.  Judge  W.  D.  SHIPMAN  was  quite  ex- 
plicit when  deciding  a  similar  question.  He  held  that  a 
patent  is  not  void  merely  because  it  contains  a  plurality  of 
claims,  each  of  which  covers  the  same  thing,  and  covers 
nothing  else,  where  there  is  no  evidence  that  the  double 
claim  was  made  with  intention  to  mislead.2  •  And  Judge 
McKENNA  has  lately  followed  that  example.4  In  the  light 
of  these  decisions  the  word  "calculated"  in  the  Supreme 
Court  decision  is  seen  to  signify  intended,  and  the  Supreme 
Court  decision  is  therefore  to  be  read  with  that  explanation. 

If  all  the  claims  of  a  particular  patent  are  void,  either  for 
want  of  particularity  or  for  want  of  invention,  novelty,  or 
utility,  or  for  any  other  reason  or  reasons,  that  patent  is 
also  void,  even  though  one  or  more  valid  claims  might  have 
been  made  and  allowed  on  the  basis  of  the  descriptive  part 
of  the  specification.5 

§  178.  The  statutory  requirements  relevant  to  particu- 
larity in  the  descriptions  and  claims  of  letters  patent,  are 
conditions  precedent  to  the  authority  of  the  Commissioner 
of  Patents  to  issue  such  documents;6  and  if  such  a  docu- 
ment is  issued,  the  descriptions  or  claims  in  which  do  not 
conform  to  these  requirements,  then  that  document  is  void.7 

1  Campbell  Printing  Press  Co.  •».          4  Bowers  v.  Von  Schmidt,  63  Fed. 
Marden,   64  Fed.   Rep.   784,  1894;      Rep.  581,  1894. 

National    Cash    Register    Co.    v.  5  Wisner®.  Grant,  5  Bann.  &  Ard. 

American    Cash    Register    Co.    53  215,  1880. 

Fed.  Rep.  370,  1892.  6  Seymour  v.  Osborne,   11   Wal- 

2  Carlton  «.  Bokee,  17  Wallace,  lace,  516,  1870. 

463,  1873.  '  O'Reilly  ®.  Morse,  15  Howard, 

3  Tompkins  v.   Gage,   5  Blatch.      62,  1853;  Ames  ».  Howard,  1  Sum- 
270,  1861.  ner,  482,  1833. 


CHAP.  VII.]  LETTERS  PATENT.  159 

But  where  the  inventions,  which  are  covered  by  part  of  the 
claims  of  a  patent,  are  sufficiently  described,  those  claims 
may  be  valid,  though  other  claims  in  the  same  patent  are 
void  for  want  of  sufficient  description.1  Such  invalidity 
does  not  depend  on  the  intention  of  the  inventor,  but  is  a 
legal  inference  from  his  failure  to  give  to  his  description 
and  claims  the  statutory  particularity.2  It  is  a  question  of 
jurisdiction  in  the  Commissioner  of  Patents ;  not  a  question 
of  fraudulent  intent  in  the  delinquent  patentee.  The  Com- 
missioner is  authorized  to  issue  letters  patent  only  on 
adequate  specifications.  If  he  issues  them  on  inadequate 
specifications,  their  invalidity  cannot  be  removed  by  show- 
ing that  the  inadequacy  arose  from  ignorance  and  not  from 
fraud.  This  point  of  law  is  not  shaken  by  the  fact  that 
Section  4920  of  the  Eevised  Statutes,  in  providing  for 
special  defences  to  patent  suits,  under  the  general  issue  in 
pleading,  provides  that  among  such  defences  the  defendant 
may  prove  "  that  for  the  purpose  of  deceiving  the  public, 
the  description  filed  by  the  patentee  in  the  Patent  Office 
was  made  to  contain  less  than  the  whole  truth  relative  to 
the  invention  or  discovery,  or  more  than  is  necessary  to 
produce  the  desired  effect."  There  are  several  grounds 
for  this  opinion  of  the  text  writer.  First :  An  omission  to 
state  the  whole  truth  relative  to  an  invention  is  not  neces- 
sarily the  same  thing  as  an  insufficient  description  of  that 
invention.  A  specification  might  have  one  or  more  of  sev- 
eral faults  belonging  to  the  first  category,  and  be  free  from 
objection  on  the  latter  score.  One  of  these  would  be  an 
omission  to  state  some  double  use  of  which  the  invention 
is  capable.  Such  an  omission,  if  made  in  ignorance  of  that 
double  use,  ought  not  to  invalidate  the  patent,  but  if  made 
with  a  fraudulent  intention  to  keep  that  double  use  forever 
secret,  it  ought  to  have  that  effect.  The  defence  in  Section 
4920  is  aimed  at  such  cases,  and  not  at  cases  of  insufficiency 
of  specification.  Second:  The  defences  provided  for  in 


1  Bene  v.  Jeantet,  129  U.  S.  683,          a  Grant  v.   Raymond,   6  Peters, 
1888.  218,  1832. 


160  LETTEKS  PATENT.  [CHAP.  VII. 

Section  4920  are  not  all  the  defences  that  may  be  interposed 
in  infringement  cases.  They  are  merely  the  defences  that 
may  be  interposed  under  the  general  issue.  The  defence 
of  insufficient  specification,  as  well  as  any  other  legal  de- 
fence, may  be  interposed  by  a  special  plea.1 

§  179.  It  is  a  question  of  fact  for  a  jury  in  an  action  at 
law,  or  for  a  chancellor  in  an  action  in  equity,  to  determine 
whether  the  specification,  including  the  claim,  of  a  patent 
conforms  to  the  statutory  requirements  relevant  to  particu- 
larity.2 That  question  is,  in  both  tribunals,  a  question  of 
evidence,  and  not  a  question  of  construction.3 

§  180.  Two  or  more  inventions,  if  they  relate  to  the  same 
subject,  or  are  in  their  nature  and  operation  connected 
together,  may  be  covered  by  a  corresponding  number  of 
claims  in  a  single  letters  patent.4  Thus  two  or  more  sepa- 
rate inventions,  which  may  be  used  as  parts  of  a  particular 
machine,  may  be  separately  claimed  in  a  single  letters  pat- 
ent, and  two  or  more  processes  which  may  be  successively 
used  to  produce  a  particular  product,  may  likewise  be 
secured;  but  two  or  more  products,  even  in  the  same  depart- 
ment of  manufactures,  cannot  be  patented  together.  So 
also  apparatus  claims  and  process  claims  may  sometimes 
be  joined,  and  a  process  claim  and  a  product  claim  may 
sometimes  be  assembled ;  but  a  machine  claim  and  a  pro- 
duct claim  cannot  both  be  made  in  a  single  patent. 

On  the  other  hand,  separate  letters  patent  may  be  granted 
for  different  parts  of  the  same  machine.5  In  such  cases  it 
is  proper  to  describe  the  whole  machine  in  each  of  the 
specifications,  and  to  picture  the  whole  machine  in  each 
set  of  drawings,  thus  causing  the  separate  letters  patent  to 


1  Reckendorfer  v.  Faber,  92  U.  S.  483,  1848;  Dobson  v.  Carpet  Co.  114 
347,  1875.  U.  S.  446, 1884;  McComb  ».  Brodie, 

2  Battin  ».  Taggert,  17  Howard,  1    Woods,    153,   1871;    Stevens   ®. 
74,  1854.  Pritchard,  2  Bann.  &  Ard.  390, 1876. 

3  Fisk,   Clark  &   Flagg  ».   Hoi-         5  Graham  v.  McCormick,  11  Fed. 
lander,  MacArthur  &  Mackey,  355,  Rep.  859,  1880;  Graham  «.  Mfg.  Co. 
1883.  11  Fed.  Rep.  138,  1880. 

4  Hogg  v.  Emerson,  6  Howard, 


CHAP.  VII.]  LETTEBS  PATENT.  161 

differ  from  each  other  only  in  their  claims.1  A  plurality  of 
patents  cannot,  however,  be  granted  for  different  uses  of 
the  same  invention.2  Indeed,  all  the  uses  of  an  invention 
are  covered  and  secured  by  a  single  letters  patent  for  that 
invention.3 

§  180a.  Only  one  valid  original  patent  can  be  granted  to 
an  inventor  on  one  invention;  and  if  a  plurality  of  such 
patents  are  thus  granted,  all  except  the  first  are  void.4 
Where  a  plurality  of  similar  or  approximating  original  pat- 
ents have  been  granted  to  an  inventor,  the  question  of  the 
identity  or  the  non-identity  of  the  inventions  may  therefore 
arise ;  and  when  such  a  question  arises,  it  must  be  deter- 
mined by  the  application  of  the  relevant  rule  of  law.  The 
rule  for  ascertaining  whether  a  reissue  patent  is  for  "  the 
same  invention  "  within  the  meaning  of  the  reissue  statute, 
is  not  applicable  to  determining  the  question  of  identity  be- 
tween two  original  patents  ;  because  a  reissue  patent  is  held 
to  be  for  "  the  same  invention,"  within  that  meaning,  where 
that  invention  was  described  in  the  original  patent,  and 
appears  therein  to  have  been  intended  to  be  secured  thereby, 
whether  it  was  thus  secured  or  not  ;5  and  because  a  man  does 
not  have  two  original  patents  for  the  same  invention,  unless 
each  of  those  patents  purports  to  secure  to  him  a  monopoly 
of  that  invention.  And  no  monopoly  of  any  invention  is 
secured  to  any  patentee,  by  any  patent,  otherwise  than  by 


1M'Millin  t>.   Rees,   5    Bann.  &  1889;   Steiner  Extinguisher  Co.  v. 

Aid.  269,  1880.  Adrian,  52    Fed.  Rep.   733,    1892; 

2  McComb  v.  Brodie,  1  Woods,  New  Departure  Bell  Co.  v.  Mfg.  Co. 
153, 1871.  64  Fed.  Rep.  862,  1894;  Wright  & 

3  Roberts  v.  Ryer,  91  U.  8.  157,  Colton    Wire-Cloth    Co.    v.   Wire- 
1875;  Western  Electric  Co.  «.  La  Cloth  Co.  67  Fed.  Rep.  792, 1895. 
Rue,  139  U.  S.  606,  1891;  Potts  «.  •»  Suffolk  Co.  v.  Hayden,  3  Wall, 
Creager,  155  U.  S.  606,  1893;    Li-  315,  1865;  Miller  v.   Eagle  Co.  151 
gowski  Clay  Pigeon  Co.   t>.   Clay  U.  S.  197,  1894. 

Bird  Co.  34  Fed.  Rep.  331,  1888;  »  parker  &  Whipple  Co.  v.  Yale 
Thompson  v.  Gildersleeve,  34  Fed.  Clock  Co.  12.3  U.  S.  99,  1887;  Free- 
Rep.  45,  1888;  Stegner  v.  Blake,  36  man  v.  Asmus,  145  U.  S.  240,  1892; 
Fed.  Rep.  183,  1888;  Thompson  v.  Corbin  Lock  Co.  v.  Eagle  Lock  Co. 
Donnell  Mfg.  Co.  40  Fed.  Rep.  383,  150  U.  S.  42,  1893. 


162  LETTEES  PATENT.  [CHAP.  VII. 

a  claim  in  that  patent,  which  is  co-extensive  with  that 
invention.1  Therefore  the  rule  for  ascertaining  the  identity 
or  the  non-identity  of  the  invention  or  inventions  of  a  plur- 
ality of  resembling  original  patents  granted  to  one  inventor, 
is  the  same  as  the  rule  for  ascertaining  the  identity  or 
non-identity  of  the  invention  or  inventions  of  a  plurality  of 
resembling  original  patents  granted  to  a  plurality  of  inventors. 
And  that  rule  consists  in  comparing  the  claims  of  the 
patents  in  question,  and  finding  identity  or  non-identity  of 
invention,  according  as  those  claims  are  found  to  be  co- 
extensive or  not  co-extensive.2 

Claims  are  co-extensive  which  specify  the  same 
combination,  of  the  same  number,  of  the  same  parts,  with 
the  same  features ;  though  the  functions  which  are  men- 
tioned in  the  claims  are  not  co-extensive.3  That  was  held 
to  be  the  character  of  the  respective  claims  of  two  patents 
to  the  same  inventor,  in  the  case  of  Miller  v.  Eagle  Co  ;  and 
therefore  the  second  of  those  patents  was  held  to  have  been 
granted  for  the  same  invention  as  the  first,  and  to  be  void. 
But  two  claims  are  not  co-extensive,  which  specify  different 
combinations  of  parts  of  a  process,  machine,  or  manufacture, 
even  where  some  of  those  parts  are  in  each  of  the  combina- 
tions ;4  because  the  claim  which  specifies  fewest  of  those 
parts,  may  be  infringed  by  what  will  not  infringe  any  claim 

1  M'Millin   v.    Rees,  5    Bann.  &  Mfg.  Co.  •».  Craig,  49  Fed.  Rep.  370, 
Ard.  269,  1880;    Delaware  Coal  &  1892;  Dederick  v.  Fox,  56  Fed.  Rep. 
Ice  Co.  v.  Packard,  5  Bann.  &  Ard.  718,   1893;  Stonementz  Mach.    Co. 
296, 1880;  Blades  v.  Rand,  27  Fed.  v.  Brown  Mach.  Co.  57  Fed.  Rep. 
Rep.  97,  1886;  Roemer  ».  Peddle,  605,  1893. 

27  Fed.  Rep.  702,  1886;  Allison  v.  3  Miller  ».   Eagle  Co.    151   U.  S. 

Brooklyn  Bridge,  29  Fed.  Rep.  517,  189,  1894;    Fassett  v.  Ewart  Mfg. 

1886;  McBride  v.  Plow  Co.  44  Fed.  Co.  58  Fed.  Rep.  366;  and  62  Fed. 

Rep.  77.  1890;  Maddock  v.  Coxon,  Rep.  407, 1894. 

45  Fed.  Rep.  579,  1891.  4  Suffolk  Co.  v.  Hayden,  3  Wall. 

2  Gold  &  Silver  Ore  Co.  v.  Disin-  315,  1865;  Wheeler  v.  McCormick, 
tegrating  Ore   Co.  6  Blatch.   311,  11   Blatch.   334,   1873;    Graham  v. 
1869;    Morris  «.   Kempshall    Mfg.  McCormick,  5  Bann.   &  Ard.  244, 
Co.  20  Fed.  Rep.  121,  1884;   Pent-  1880;  Graham  v.  Crawford  Mfg.  Co. 
large  •».   New  York  Bushing  Co.  11  Fed.  Rep,  138, 1880. 

20  Fed.   Rep.    314,  1884;    Nathan 


CHAP.  VII.]  LETTERS  PATENT.  163 

specifying  more  of  those  parts.1  That  was  held  to  be  the 
character  of  the  respective  claims  of  two  patents  to  the  same 
inventor,  in  the  case  of  Suffolk  Co.  v.  Hayden ;  and  there- 
fore the  second  of  those  patents  was  held  to  have  been 
granted  for  another  invention  than  the  first,  and  to  be  valid. 
And  two  claims  are  not  co-extensive,  where  one  of  them 
specifies  all  the  features  of  any  or  all  of  the  parts  of  its 
subject,  while  the  other  omits  one  of  those  features  ;2 
because  the  latter  may  be  infringed  by  processes  or  mechan- 
isms which  lack  that  feature,  while  the  former  cannot.3 

Where  a  plurality  of  approximating  original  patents  have 
been  granted  to  an  inventor ;  and  where  the  question  of 
identity  of  subject  has  been  decided  in  the  negative,  or 
must  evidently  be  so  decided ;  the  question  may  arise 
whether  the  ascertained  difference  between  the  two  sub- 
jects is  a  patentable  difference.4  In  investigating  that 
question,  the  patent  which  was  applied  for  last,  even  if 
granted  first,  will  be  treated  as  the  junior  patent ;  since  the 
dates  of  the  applications,  and  not  the  dates  of  the  patents, 
control  in  determining  the  legal  effect  to  be  given  to  two 
patents  issued  at  different  dates,  to  the  same  inventor,  and 
the  order  in  which  they  are  to  be  considered.5 

§  181.  To  construe  letters  patent,  is  to  determine  pre- 
cisely what  inventions  they  cover  and  secure.  Nothing  de- 
scribed in  letters  patent,  is  secured  thereby,  unless  it  is 

1  Vance  v.  Campbell,  1  Black,  430,  a  Thompson-Houston  Co.    v.  El- 

1861;  Eames  v.  Godfrey,  1  Wall.  78.  mira  Ry.  Co.  69  Fed.  Rep.  — ,  1895. 

1863;  Case®.  Brown,  2  Wall.  320,  3  Prouty  v.  Ruggles,  16  Peters, 

1864;  Dunbar  v.  Meyers,  94  U.  S.  341, 1842;  Sharp  v.  Reissner,  119  U. 

187, 1876;  Puller  v.  Yentzer,  94  U.  S.  636,  1886;  McClain  v.  Ortmayer, 

8.   297,   1876;    Fay  v.  Cordesman,  141   U.    S.   425,    1891;     Wright   v. 

109  U.  S.  420,  1883;  Rowell  v.  Lind-  Yuengling,  155  U.  S.  52, 1894;  Black 

say,  113  U.  8.  102,  1884;  Sargent  v.  Diamond  Coal  Co.  v.  Excelsior  Co. 

Lock  Co.  114  U.  S.  86.  1884;  Shep-  156  U.  S.  617,  1895. 

ard  v.  Carrigan,  116  U.  S.  597,  1885;  4  Reynolds  v.  Standard  Paint  Co. 

Yale  Lock  Co.  ®.  Sargent.  117  U.  S.  68  Fed.  Rep.   487,  1895;  Russell  v. 

378,  1885;  Derby  v.  Thompson,  146,  Kern,  72  Off.  Gaz.  590,  1895. 

U.  S.  482,   1892;     Weatherhead  v.  5  Barbed  Wire  Patent,  143  U.  S. 

Coupe,  147  U.  S.  335,  1893;  Dobson  281,  1892. 
v.  Cubley,  149  U.  S.  120,  1893. 


164 


LETTERS  PATENT. 


[CHAP.  vii. 


covered  by  a  claim.1  And  a  claim  which  is  clearly  narrower 
than  the  invention  which  it  was  designed  to  cover,  cannot 
be  broadened  by  construction  to  correspond  with  that  in- 
vention.2 The  construction  of  letters  patent  depends  there- 
fore upon  the  construction  of  their  respective  claims  ;3  and 
the  established  rules  by  means  of  which  claims  are  properly 
construed  may  constitute  the  next  subject  of  discussion. 

§  182.  The  phrase  "  substantially  as  described,"  or  its 
equivalent,  when  such  a  phrase  occurs  in  a  claim,  throws 
the  investigator  back  to  the  description  for  means  of  con- 
struction ;4  and  that  phrase  is  always  implied  in  claims 
wherein  it  is  not  expressed.5  The  words  "  substantially  as 
specified  "  mean  substantially  as  specified  in  regard  to  the 
particular  matter  which  is  the  subject  of  the  claim  ;6  and  the 
same  rule  applies  with  the  same  force  to  the  words  "  sub- 
stantially as  described."  But  neither  of  those  phrases  will 
import  into  a  claim  any  unessential  feature  of  the  subject 
thereof  ;7  nor  even  a  detail,  which  was  said  to  be  best 


iM'Millin  v.  Rees,  5  Bann.  & 
Ard.  269, 1880;  Delaware  Coal  &  Ice 
Co.  0.  Packard,  5  Bann.  &  Ard.  296, 
1880;  Blades  «.  Rand,  27  Fed.  Rep. 
97,1886;  Roemerfl.  Peddle,  27  Fed. 
Rep.  702,  1886;  Allison  v.  Brooklyn 
Bridge,  29  Fed.  Rep  517,  1886;  Mc- 
Bride  *.  Plow  Co.  44  Fed.  Rep.  77, 
1890;  Haddock  v.  Coxon,  45  Fed. 
Rep.  579, 1891. 

2  Smith  v.  Macbeth,  67  Fed.  Rep. 
140,  1895;  New  Home  Sewing  Ma- 
chine Co.  v.  Singer  Mfg.  Co.  68  Fed. 
Rep.  226,  1895. 

3  Maddock    «.    Coxon.    45    Fed. 
Rep.  579,  1891. 

4  Seymour®.  Osborne,  11  Wallace, 
516,  1870;  Corn-Planter  Patent,  23 
Wallace.  181. 1874;  TelephoneCases, 
126  U.   S.   537,   1887;  Consolidated 
Roller  Mill  Co.  v.  Walker,  138  U.  S. 
133,  1891. 

5  Matthews   v.    Schoneberger,    4 
Fed.  Rep.  635,  1880;   Westinghouse 


v.  Air  Brake  Co.  2  Bann.  &Ard.  57, 
1875;  Olds  v.  Brown,  41  Fed.  Rep. 
704,  1890;  Foos  Mfg.  Co.  v.  Thresher 
Co.  44  Fed.  Rep.  599,  1891;  Bundy 
Mfg.  Co.  v.  Columbian  Co.  59  Fed. 
Rep.  294.  1894. 

6  Lake  Shore    R.  R.  Co.  v.   Car 
Brake  Shoe  Co.  110  U.  S.  235,  1883, 
Page  Fence  Co.  v.  Land,  49  Fed. 
Rep.  943,    1891;    Edison    Electric 
Light  Co.  v.  U.  S.  Electric  Lighting 
Co.  52  Fed.  Rep.  309,  1892;  McKay 
&  Copeland  Lasting  Machine  Co.  v. 
Claflin,  58   Fed.    Rep.   354,  1893; 
Reece  Button-Hole  Mach.    Co.   «. 
GlobeMach.Co.61  Fed.  Rep.961,1894. 

7  Campbell  Printing  Press  Co.  v. 
Marden,  64  Fed.  Rep.  786,    1894; 
Temple  Pump  Co.  v.  Mfg.  Co.  30 
Fed.  Rep.  442, 1887;  Edison  Electric 
Light  Co.  v.  U.  S.  Electric  Lighting 
Co.  52  Fed.  Rep.  309,  1892;  Pacific 
Cable  Ry.  Co.  v.  Butte  City  Ry.  Co. 
55  Fed.  Rep.  763,  1893. 


CHAP.  VII.]  LETTERS  PATENT.  165 

in  the  specification,  but  was  afterwards  found  to  be  useless.1 
The  implication  of  such  a  phrase,  where  it  is  not  expressed, 
follows  from  the  rule  that  while  descriptions  are  considered 
in  this  connection  only  for  the  purpose  of  construing  claims,3 
a  claim  should  always  be  construed  in  the  light  of  the  de- 
scription f  and  the  certainty  of  that  implication  indicates 
the  propriety  of  omitting,  for  the  sake  of  brevity,  all  such 
phrases  from  claims.  An  uncommon  word  in  a  claim  is  to 
be  construed  in  the  light  of  the  description,  rather  than  in  the 
light  of  the  dictionary  ;4  because  the  patentee  presumably 
knew  the  description,  and  may  not  have  known  the  diction- 
ary ;  and  because  the  reader  of  a  patent  may  reasonably  be 
expected  to  consult  the  description,  before  he  consults  the 
dictionary,  when  engaged  in  trying  to  learn  the  meaning  of 
one  of  its  claims. 

The  phrase  "  for  the  purpose  set  forth  "  is  never  implied 
in  a  claim,  because  an  inventor  is  entitled  to  the  exclusive 
use  of  his  invention  for  all  purposes,  whether  he  sets  them 
all  forth  in  his  specification  or  not.5  And  such  a  phrase 
ought  never  to  be  expressed  in  a  claim,  because  it  cannot 
impart  validity  to  a  claim  otherwise  void,6  and  because  it 
may  enable  persons  to  avoid  infringement,  who  would  other- 
wise infringe.7 

The  drawings  attached  to  letters  patent  may  be  referred 
to  for  explanation  of  anything  which  the  description  leaves 
obscure,8  but  not  to  supply  a  total  omission  of  description.9 


1  American  Dunlop  Tire  Co.  ®.  Fed.  Rep.  510, 1894. 

Erie  Rubber  Co.  66  Fed.  Rep.  558,  5  Roberts  v.  Ryer,  91  U.  S.  157, 

1895.  1875. 

2  Pitts  v.  Wemple,  1  Bissell,  87,  6  Crescent  Brewing  Co.   v.  Got- 
1855.  fried,  127  U.  8. 168,  1888. 

3  Smith  v.  Dental  Vulcanite  Co.  '  Keystone  Bridge  Co.  t>.  Iron  Co. 
93  U.  S.  493,  1876;  Howe  Machine  95  U.  S.  278,  1877. 

Co.  •».  National  Needle  Co.  134  U.  8  Hogg  v.  Emerson,  11  Howard, 

S.  395, 1890;  Pacific  Cable  Railway  587,  1850. 

Co.  «.  Butte  City  Ry.  Co.  58  Fed.  9  Gunn  v.  Savage,  30  Fed.  Rap. 

Rep.  423, 1893.  369,  1887;  Wilkin  v.  Covel,  46  Fed. 

4  Standard  Paint  Co.  v.  Bird,  65  Rep.  926,  1891. 


166  LETTERS  PATENT.  [CHAP.  VII. 

And  neither  drawings  nor  descriptions  can  enlarge  claims,1 
unless  it  be  where  a  claim  is  limited  on  its  face  to  the  use 
of  the  invention  in  a  particular  environment,  and  where  the 
description  shows  that  it  was  intended  to  be  claimed  in 
other  environments  also.2  Claims  may  be  narrowed  by 
limitations  in  the  description,3  and  also  by  importation  by 
construction  of  described  elements  which  are  necessary  to 
invention  or  novelty  as  well  as  operativeness  ;4  but  not  by 
inference  from  the  description,  where  the  state  of  the  prior 
art  does  not  require  such  an  implied  limitation.5 

182a.  Beference  letters  or  numerals,  when  used  in  a  claim 
to  indicate,  or  help  indicate,  a  part  or  combination  covered 
thereby,  do  not  limit  that  claim  to  the  specific  mechanism 
shown  in  the  patent ;  unless  the  claim  must  be  thus  limited 
by  the  prior  state  of  the  art.6  But  where  the  novelty  of  a 
part  or  combination,  shown  in  the  drawings  of  a  patent,  re- 
sides entirely  in  all  its  particular  characteristics,  and  where 
that  part  or  combination  is  specified  in  a  claim  by  reference 
letters  or  numerals,  that  claim  is  limited  to  a  part  or  com- 
bination having  those  particular  characteristics  ;  for  if  not 
thus  restricted,  the  claim  would  be  void  for  want  of  novelty.7 
But  the  same  rule  applies,  in  an  otherwise  similar  case,  for 
the  same  reason,  where  the  part  or  combination,  covered  by 
a  claim,  is  indicated  therein  in  some  other  way  than  by  ref- 
erence letters  or  numerals.  A  rule  which  would  give,  to  a 
reference  letter  or  numeral  in  a  claim,  a  more  narrowing 
effect  than  is  called  for  by  the  prior  state  of  the  art,  would 


1  Railroad  Co.  v.  Mellon,  104  U.  S.  mayer,  141  U.  S.  419,  1891. 

112,  1881;  White  v.  Dunbar,  119  U.  4  Hartshorn  «.  Barrel  Co.  119  U. 

S.  51,  1886;  Howe  Machine  Co.  «.  S.  679,  1886;   Consolidated  Roller 

National  Needle  Co.  134  U.  S.  394,  Mill  Co.  v.  Walker,  138  U.  S.  132, 

1890;  McClain  t>.  Ortmayer,  141  U.  1891. 

S.  419,  1891.  s  Campbell  Printing  Press  Co.  «. 

2  LaRue  v.  Electric  Co.  28  Fed.  Marden,  64  Fed.  Rep.  785, 1894. 
Rep.  85, 1886;  LaRue  v.  Electric  Co.  6  Campbell  Printing  Press  Co.  «. 
31  Fed.  Rep.  83,  1887.  Marden,  64  Fed.  Rep.  785,  1894. 

3  Sargent  v.  Lock  Co.  114  U.  S.  7  Knapp  v.  Moras,  150  U.  S.  228, 
86,   1884 ;  Crawford  v.   Heysinger,  1893;  Lehigh  Valley  Railroad  Co. 
123  U.  S.  606,  1887;  McClain  v.  Ort-  v.  Kearney,  158  U.  S.  469,  1895. 


CHAP.  VII.]  LETTEES  PATENT.  167 

be  an  artificial  rule  of  interpretation  ;  but  the  object  of  the 
patent  law  is  to  secure  to  inventors  what  they  have  invented, 
and  that  object  is  not  to  be  defeated  by  the  application  of 
any  such  rule.1 

§  183.  Claims  which  are  functional  in  form ;  that  is  to 
say,  claims  which  literally  purport  to  cover  a  result  rather 
than  a  process  or  a  thing,  are  properly  construed  to  cover 
only  the  process  of  the  thing  which  produces  that  result, 
for  otherwise  such  claims  would  be  void.2  And  a  claim 
which  literally  purports  to  cover  a  process  performed  by 
machinery,  is  properly  construed  to  cover  the  machinery 
itself,  and  not  any  process  performed  thereby.3 

§  184.  The  state  of  the  art,  to  which  an  invention  belongs, 
at  the  time  that  invention  was  made,  must  be  considered  in 
construing  any  claim  for  that  invention,4  although  the  art 
may  have  been  advanced  to  that  stage,  by  a  prior  invention 
of  the  same  inventor.5  The  leading  cases  on  this  subject 
are  McCormick  v.  Talcott,6  and  Railway  Co.  v.  Sayles,7  and 
Morley  Machine  Co.  v.  Lancaster.8 

The  doctrine  of  the  first  of  these  cases  is  as  follows.  The 
original  inventor  of  a  machine,  will  have  a  right  to  treat  as 
infringers  all  who  make  machines  operating  on  the  same 


1  Topliff  v.  Topliff,  145  U.  S.  171,  Florsheim  ».   Schilling,   137  U.S. 
1892.  71,  1890;  The  Holler  Mill  Patent, 

2  Fuller  v.  Yentzer,  94  U.  S.  288,  156  U.   S.   269,  1895;  Dederick  «. 
1876;  Parham  v.  Buttonhole  Co.  4  Seigmund,  51  Fed.  Rep.   235,  1892; 
Fisher,  468, 1871;  Hitchcock  v  Tre-  Brush  Electric  Co.  v.  Electric  Imp. 
maine,  4  Fisher,  508,  1871;  Coes  v.  Co.  52  Fed.  Rep.  972,  1892;  Boston 
Collins  Co.  9  Fed.  Rep.  905,  1882;  Lasting  Mach.  Co.   v.  Woodward, 
Henderson  v.  Stove  Co.  2  Bann.  &  53  Fed.  Rep.  481,  1893;  Stirrat  v. 
Ard.  608,  1877;  Palmer  v.  Gatling  Excelsior  Mfg.   Co.  61   Fed.  Rep. 
Gun  Co.  8  Fed.  Rep.  513,  1881.  Co-  981,  1894. 

luinbus  Watch  Co.  v.   Robbins,  64  5  Celluloid  Mfg.  Co.  v.  Cellonite 

Fed.  Rep.  395,  1894.  Mfg.  Co.  42  Fed.  Rep.  906,  1890. 

3  Smith  &  Egge  Mfg.  Co.  v.  Bridge-  «  McCormick  v.  Talcott,  20  How- 
port  Chain  Co.  46  Fed.  Rep.  395,  ard,  402,  1857. 

1891.  7  Railway  Co.  v.  Sayles,  97  U.  S. 

4  Carlton  v.  Bokee,  17  Wallace,  554,  1878. 

463,  1873;  Washing-Machine  Co  v.  » Morley    Machine    Co.  v.   Lan- 

Tool   Co.  20  Wallace,   342,    1873;  caster,  129  U.  S.  273,  1889. 


168  LETTEKS  PATENT.  [CHAP.  VII. 

principle,  and  performing  the  same  functions,  by  analogous 
means,  or  equivalent  combinations  ;  even  though  the  infring- 
ing machine  be  an  improvement  on  the  original,  and  patent- 
able  as  such.  But  if  the  invention  claimed,  be  itself  but  an 
improvement  on  a  known  machine,  by  a  mere  change  of 
form  or  combination  of  parts,  the  patentee  cannot  treat 
another  as  an  infringer,  who  has  improved  the  original 
machine,  by  use  of  a  different  form  or  combination,  performing 
the  same  functions.  The  inventor  of  the  first  improvement 
cannot  invoke  the  doctrine  of  equivalents  to  suppress  any 
other  improvement  which  is  not  a  mere  colorable  invasion 
of  the  first. 

The  doctrine  of  the  Sayles  case  is  as  follows.  If  one 
inventor,  jn  a  particular  art,  precedes  all  the  rest,  and  strikes 
out  something  which  underlies  all  that  they  produce,  he 
subjects  them  to  tribute.  But  if  the  advance  toward  the 
thing  desired  is  gradual,  so  that  no  one  can  claim  the 
complete  whole,  then  each  inventor  is  entitled  to  the  specific 
form  of  device  which  he  produced,  and  every  other  inventor 
is  entitled  to  his  own  specific  form,  so  long  as  it  differs  from 
those  of  his  competitors  and  does  not  include  theirs. 

The  doctrine  of  the  Morley  case  is  as  follows :  Where  an 
invention  is  primary,  any  subsequent  improvement  which 
employs  substantially  the  same  means,  to  accomplish  the 
same  result,  is  within  the  scope  of  a  proper  patent  on  the 
primary  invention,  although  the  subsequent  contrivance 
may  contain  valuable  improvements  ;  but  secondary  patents 
must  be  more  narrowly  construed  than  primary  patents. 

The  meaning  of  these  three  cases  seems  to  be  that  every 
inventor  is  entitled  to  claim  whatever  he  was  the  first  to 
invent.  If  A.  B.  is  the  first  to  invent  mechanism  to  perform 
a  particular  work,  and  if  his  mechanism  is  substantially  in- 
corporated into  subsequent  machines  which  do  that  work, 
then  A.  B.  is  entitled  to  such  a  construction  of  his  patent 
as  will  be  infringed  by  those  later  machines ;  but  if  C.  D.  is 
a  mere  improver  on  A.  B.'s  machine,  G.  D.  is  not  entitled 
to  such  a  construction  of  his  patent,  as  will  cover  the 
machines  of  still  later  inventors,  who  have  improved  on  A.  B.'s 


CHAP.  VII.]  LETTERS  PATENT.  169 

machine  in  a  substantially  different  manner.  It  follows 
from  these  doctrines  that  C.  D.'s  patent  must  be  construed 
in  the  light  of  A.  B.'s  machine,  and  indeed  of  every  other 
similar  and  older  structure  ;  which  is  the  same  thing  as  say- 
ing that  every  patent  must  be  construed  in  the  light  of  the 
state  of  the  art,  at  the  time  the  invention  it  covers  was 
produced.  ^ 

§  185.  "  A  patent  should  be  construed  in  a  liberal  spirit 
to  sustain  the  just  claims  of  the  inventor.  This  principle 
is  not  to  be  carried  so  far  as  to  exclude  what  is  in  it,  or  to 
interpolate  anything  which  it  does  not  contain.  But  liberal- 
ity, rather  than  strictness,  should  prevail  where  the  fate  of 
the  patent  is  involved,  and  the  question  to  be  decided  is 
whether  the  inventor  shall  hold  or  lose  the  fruits  of  his 
genius  and  his  labors."1  "  Patents  for  inventions  are  to 
receive  a  liberal  construction,  and  under  the  fair  application 
of  the  rule,  ut  res  magis  valeat  quam  pereat,  are,  if  practica- 
ble to  be  so  interpreted  as  to  uphold  and  not  to  destroy  the 
right  of  the  inventor."2  "While  it  is  undoubtedly  true 
that  a  patentee  may  so  restrict  his  claim  as  to  cover  less 
than  what  he  invented,  or  may  limit  it  to  one  particular 
form  of  a  machine,  excluding  all  other  forms,  though  they 
also  embody  his  invention,  yet  such  an  interpretation  should 
not  be  put  upon  his  claim  if  it  can  fairly  be  construed 
otherwise."3  "  In  a  case  of  doubt,  where  the  claim  is  fairly 
susceptible  of  two  constructions,  that  one  will  be  adopted, 
which  will  preserve  to  the  patentee  his  actual  invention."4 
"  The  object  of  the  patent  law  is  to  secure  to  inventors,  a 
monopoly  of  what  they  have  actually  invented  or  discovered, 
and  it  ought  not  to  be  defeated  by  a  too  strict  and  technical 
adherence  to  the  letter  of  the  statute,  or  by  the  application 
of  artificial  rules  of  interpretation."5 


1  Rubber  Co.  o  Goodyear,  9  Wai-  330,  1853. 

lace,  788,  1869.  *McClain  v.  Ortmayer,  1.41  U.  S. 

2  Turrill  «.  Railroad  Co.  1  Wai-  425,  1891. 

lace,  491,  1863.  *  Topliff  e.  Topliff,  145  U.  S.  171. 

3  Winans  v.  Denmead,  15  Howard,  1892. 


170  LETTEES  PATENT.  [CHAP.  VII. 

These  are  the  declarations  of  the  Supreme  Court  relevant 
to  the  proper  liberality  to  be  observed  in  construing 
patents.  That  liberality  as  often  shows  itself  in  a  narrow 
construction  as  in  a  broad  one ;  for  narrow  construction  may 
be  as  necessary  to  establish  the  validity  of  a  patent,  as  a 
broad  construction  is  to  lay  the  foundation  for  proof  of  its 
infringement.  Therefore  when  it  becomes  necessary  to 
construe  a  claim  narrowly,  in  order  that  its  novelty  may  not 
be  negatived  by  the  prior  art,  or  its  validity  otherwise  over- 
thrown, courts  will  give  such  a  narrow  construction,  if  they 
can  do  so  consistently  with  the  language  of  the  claim  and 
of  the  description.1  On  the  other  hand,  a  claim  will  not  be 
narrowed  by  importing  into  it,  by  construction,  any  dis- 
pensable element,  in  order  to  enable  an  infringer  to  escape 
the  consequences  of  his  infringement.2 

§  186.  "  It  is  well  known  that  the  terms  of  the  claim  in 
letters  patent  are  carefully  scrutinized  in  the  Patent  Office. 
Over  this  part  of  the  specification  the  chief  contest  gener- 
ally arises.  It  defines  what  the  office,  after  a  full  examina- 
tion of  previous  inventions  and  the  state  of  the  art, 
determines  the  applicant  is  entitled  to.  The  courts  therefore, 
should  be  careful  not  to  enlarge,  by  construction,  the  claim 
which  the  Patent  Office  has  admitted,  and  which  the  patentee 
has  acquiesced  in,  beyond  the  fair  interpretation  of  its 
terms."3  "  As  patents  are  procured  ex,  parte,  the  public  is 
not  bound  by  them,  but  the  patentees  are.  And  the  latter 
cannot  show  that  their  invention  is  broader  than  the  terms 
of  their  claim  ;  or,  if  broader,  they  must  be  held  to  have 
surrendered  the  surplus  to  the  public."4  "  If  the  language 
of  the  specification  and  claim  shows  clearly  what  the  pat- 
entee desired  to  secure  as  a  monopoly,  nothing  can  be  held 


1  Klein  «.  Russell,  19  Wallace,  433,  Fed.  Rep.  931,  1892. 

1873;  Jones  v.  Barker,  11  Fed.  Rep.  2  Lamson  Cash  Reg.  Co.  v.  Kep- 

600,  1882;  Stevenson  v.  Magowan,  linger,  45  Fed.  Rep.  249,  1890. 

31  Fed.  Rep.   826,   1887;    Consoli-  3  Burns  v.  Myer.  100  U.  S.  672. 

dated  Roller  Mill  Co.  «.  Coombs,  39  1879. 

Fed.  Rep.  30,  1889;    Steam  Gauge  4  Keystone  Bridge  Co.  v.  Iron  Co. 

and  Lantern  Co.  v.  Williams,  50  95  U.  S.  278,  1887. 


CHAP.  VII.]  LETTERS  PATENT.  171 

to  be  an  infringement,  which  does  not  fall  within  the  terms 
which  the  patentee  has  himself  chosen  to  express  his  inten- 
tion."1 

These  are  the  declarations  of  the  Supreme  Court  relevant 
to  the  proper  strictness  to  be  observed  in  construing  patents  ; 
and  they  apply  to  primary  patents  as  much  as  to  secondary 
patents.3  Therefore,  when  a  claim  clearly  covers  a  combin- 
ation of  certain  elements,  it  cannot,  by  construction,  be  so 
altered  as  to  cover  more  elements,  so  as  not  to  be  invalid,3 
or  to  cover  fewer  elements,  and  thus  be  rendered  more 
likely  to  be  infringed,4  or  to  cover  other  elements  in  place 
of  some  that  may  be  omitted,  but  which  are  not  equivalents 
therefor.5  So  also,  a  claim  for  a  process,  substantially  as 
described,  cannot  be  construed  to  cover  an  incidental  pro- 
cess set  forth  in  the  description,  but  merely  recommended 
there,  instead  of  being  required  or  being  stated  to  be  essen- 
tial to  the  principal  process  of  the  patent.6 

§  187.  Letters  patent  may  be  construed  in  the  light  of  the 
contemporaneous  intention  of  the  inventor  and  of  the  Pat- 
ent Office ;  and  to  this  end  recourse  may  be  had  to  the  files 
of  the  application  papers  to  see  what  changes  were  made  in 
the  description  and  claims  while  the  application  was  pend- 
ing in  the  Patent  Office.7  And  where  such  a  change  was  a 
broadening  one,  it  cannot  be  construed  away  in  order  to 


1  McClain  v.  Ortmayer,  141  U.  S.  597,  1885;  Sutter  v.   Robinson,  119 
425,  1891.  U.     S.     541,     1886 ;      McClain     «. 

2  Groth  «.  Postal  Supply  Co.  61  Ortmayer,  141  U.  S.  425,  1891. 
Fed.  Rep.  287,  1894.  6  Sackett  v  Smith,  42  Fed.  Rep. 

3  Howe  Machine  Co.  ».  National  852,  1890. 

Needle  Co.  134  U.   S.    394,   1890;  <*  gewell  v.  Jones,  91   U.  S.  185, 

Morgan  Envelope    Co.   v.    Albany  1875;    Holliday    v.    Pickhardt,    29 

Paper  Co.   152    U.    S.    429,    1894;  Fed.  Rep.  858,  1887. 

Stiles  v.  Rice,  29  Fed.  Rep.  445,  '  Crawford  v.  Heisinger,  128  U. 

1887;     Wollensak    v.    Sargent,    41  S.  602,  1887;  Trader  v.  Messmore, 

Fed.  Rep.  55,  1890;  Westinghouse  1  Bann.  &  Ard.  639,  1875;  Bate  Re- 

v.    Edison  Electric    Light   Co.   63  frigerating  Co.  v.  Eastman,  24  Fed. 

Fed.  Rep.  592,  1894.  Rep.  649,  1885;  Williams  v.  Rubber 

4  Shepard  t>.  Carrigan,  116  U.  S.  Shoe  Co.  49  Fed.  Rep.  251,  1892. 


172  •  LETTERS  PATENT.  [C3AP.  VII. 

ascribe  validity  to  the  patent.1  But  no  subsequent  applica- 
tion by  the  same  inventor  for  another  patent  is  admissible 
in  this  behalf  ;2  except  where  the  patent  contains  a  dis- 
claimer of  matter  said  therein  to  be  claimed  in  another 
patent  or  application  of  the  same  inventor,  in  which  case 
that  other  patent  or  application  is  admissible  to  aid  in 
ascertaining  the  scope  of  the  disclaimer.3 

§  187«.  Where  an  applicant,  on  the  rejection  of  his  appli- 
cation, inserted  in  consequence  of  that  rejection,  limitations 
and  restrictions  into  his  specification,  for  the  purpose  of 
obtaining  his  patent,  he  cannot,  after  he  has  obtained  it, 
claim  that  it  shall  be  construed  as  it  would  have  been  if 
such  limitations  and  restrictions  were  not  contained  in  it.4 
And  where  an  applicant  materially  modified  a  claim,  in 
obedience  to  a  requirement  of  the  Patent  Office,  it  will  not 
be  construed  as  it  would  have  been  if  it  had  not  been  modi- 
fied.5 Neither  can  a  patentee  who  cancelled  a  claim  in  his 
application,  after  it  was  rejected  by  the  Patent  Office  for 
want  of  invention  or  for  want  of  novelty,  afterwards  success- 
fully contend  that  some  other  claim  of  his  patent  shall  be 
construed  to  be  co-extensive  with  the  one  rejected.6  Nor 
can  a  disclaimer,  which  was  inserted  by  an  applicant  in  his 
application  in  pursuance  of  a  requirement  of  the  Patent 
Office,  be  eliminated  from  his  patent  by  construction.7  And 
where  an  applicant  cancelled  a  portion  of  his  application, 
in  pursuance  of  a  decision  in  the  Patent  Office  that  it  could 
not  be  covered  by  one  application  with  the  other  portions 


1  Morgan  Envelope  Co.  v.  Albany  133  U.   S.  368,  1890;    Williams  v. 
Paper  Co.  152  U.  S.  429, 1894;  John-  Rubber  Shoe  Co.  49  Fed.  Rep.  251, 
son  v.  Olsen,  61  Fed.  Rep.  833, 1894.  1892. 

2  Edison  Electric  Light  Co.  v.  U.S.  6  Royer  ».  Coupe,  146  U.S.  532, 
Electric  Lighting  Co.  47  Fed.  Rep.  1892;   Corbin  Cabinet  Lock  Co.  v. 
462,  1891.  Eagle  Lock  Co.  150  U.  S.  40,  1893; 

3  National    Typographic    Co.    v.  Douglas  v.  Abraham,  50  Fed.  Rep. 
New  York  Typograph  Co.  46  Fed.  422,  1892;  J.  L.  Mott  Iron  Works  v. 
Rep.  115,  1891.  Standard  Mfg.  Co.  53  Fed.  Rep.  821, 

4Roemer  ».  Peddle,   132  U.   S.  1893. 

317,  1889.  7  Stahl  v.  Williams,  52  Fed.  Rep. 

5  Phoenix  Caster  Co.  v.  Spiegel,  651,  1892. 


CHAP.  VII.]  LETTERS  PATENT.  173 

thereof,  a  patent  granted  upon  the  application  thus  reduced, 
cannot  be  construed  to  be  co-extensive  with  what  it  would 
have  been  but  for  such  cancellation.1  And  these  rules 
apply  even  where  the  action  of  the  Patent  Office  was 
erroneous,  or  that  of  the  applicant  unnecessary.2 

But  merely  incidental  amendments,  which  are  not  made 
in  pursuance  of  any  references  or  real  reasons  given  by  the 
Patent  Office,  but  are  made  in  deference  to  Patent  Office 
preferences  for  particular  phraseology,  will  not  be  construed 
to  limit  claims  so  as  to  make  them  narrower  than  the  in- 
ventions they  were  designed  to  cover.3  And  no  amendment 
made  to  meet  an  objection  of  the  Patent  Office  will  be  con- 
strued to  disclaim  the  patentee's  actual  invention,  if  that 
construction  can  be  avoided  without  doing  violence  to  the 
obvious  meaning  of  the  language.4 

§  188.  The  laws  which  were  in  force  when  any. particular 
patent  was  granted,  are  the  laws  according  to  which  it  must 
be  construed ; 5  and  a  special  statute  relevant  to  any  partic- 
ular patent  is  ingrafted  on  the  general  patent  statutes,  and 
must  be  construed  harmoniously  with  them.6 

§  189.  Questions  of  construction  are  questions  of  law  for 
the  judge,  not  questions  of  fact  for  the  jury.7  As  it  cannot 
be  expected,  however,  that  judges  will  always  possess  the 
requisite  knowledge  of  the  meaning  of  the  terms  of  art  or 
science  used  in  letters  patent,  it  often  becomes  necessary 
that  they  should  avail  themselves  of  the  light  furnished  by 
experts  relevant  to  the  significance  of  such  words  and 
phrases.8  The  judges  are  not,  however,  obliged  to  blindly 
follow  such  testimony.  They  may  disregard  it  if  it  appears 

1  Macbeth  v.  Gillinder,   54  Fed.  6  McClurg  v.  Kingsland,  1  How- 
Rep.  170. 1889.  ard,  202,  1843. 

2  Lapham  Dodge  Co.  v.  Severin,  6  Evans   •».   Eaton,   3    Wheaton, 
40  Fed.  Rep.  763, 1889;  Shaw  Stock-  454,  1818;  Bloomer  v.  McQuewan, 
ing  Co.  v.  Pearson.  48  Fed.  Rep.  14  Howard,  539,  1852. 

236,  1891.  7  Winans  v.  Denmead,  15  How- 

3  Rhodes  v.  Lincoln  Press  Drill  ard,  330.  1853;  Coupe  v.  Royer,  155 
Co.  64  Fed.  Rep.  220,  1894.  U.  S.  565,  1894. 

4  Westinghouse  v.  Brake  Co.  66  8  Loom  Co.  v.  Higgins,  105  U.  S. 
Fed.  Rep.  1006,  1895.  580,  1881. 


174  LETTERS  PATENT.  [CHAP.  VII. 

to  them  to  be  unreasonable.1  While  the  testimony  of 
experts  relevant  to  the  meaning  of  particular  words  or 
phrases  in  letters  patent  is  to  this  extent  admissible,  such 
testimony  is  wholly  inadmissible  relevant  to  the  construc- 
tion of  the  letters  patent  as  a  whole.2 

§  190.  In  the  absence  of  contrary  evidence,  the  invention 
covered  by  a  particular  letters  patent  is  presumed  to  be 
identical  with  that  covered  by  the  application  on  which 
those  letters  patent  were  granted.3 

§  191.  All  persons  are  bound  to  take  notice  of  the  con- 
tents of  all  letters  patent  of  the  United  States,  because 
those  letters  patent  are  matters  of  public  record.4 

1  Winans  v.  Railroad  Co.  21  How-  3  Loom  Co.  *.  Higgins,  105  U.  S. 
ard,  88,  1858.  580,  1881. 

2  Corning  v.  Burden,  15  Howard,  4  Boyden  v.  Burke,  14  Howard, 
252,  1853.  575,  1852. 


CHAPTER  VIII. 


DISCLAIMERS. 


192.  Statutory  authorization  of  dis- 
claimers. 

193.  Statutory  prescriptions,  rele- 
vant to  disclaimers. 

194.  Errors  which  justify  disclaim- 
ers. 

195.  Mistakes  of  fact,  relevant  to 
novelty. 

196.  Mistakes  of  law,  relevant  to 
invention. 

197.  Claims  void  for  want  of  utility. 

198.  Combination  claims. 

199.  Compound  claims. 

200.  Immaterial  claims. 

201.  Reissue  claims. 

202.  Fraudulent  or  deceptive  inten- 


tion 

203.  Effect  of  unreasonable  delay 
to  file  a  disclaimer. 

204.  Beginning  of  unreasonable  de- 
lay to  file  a  disclaimer. 

205.  Costs,  where  a  necessary  dis- 
claimer has  not  been  filed. 

206.  Extent  of  disclaimant's  inter- 
eat. 

207.  Construction  of  letters  patent 
after  a  disclaimer. 

208.  Disclaimers  filed  pending  liti- 
gation. 

209.  Disclaimers  demanded  by  judi- 
cial decisions. 


§  192.  THE  statutory  provisions  relevant  to  disclaimers 
originated  in  1837,  and  have  never  been  substantially 
changed.  Sections  7  and  9  of  the  Patent  Act  of  that  year,1 
embodied  those  provisions ;  and  those  sections  continued 
in  force  till  July  8,  1870,  when  they  were  substantially 
re-enacted  as  Sections  54  and  60  of  the  Consolidated  Patent 
Act  of  that  date.2  In  1874,  the  latter  sections  were,  in  their 
turn,  re-enacted,  without  any  material  change,  as  Sections 
4917  and  4922  of  the  Revised  Statutes.  It  would  have  been 
better  statute  writing,  if  those  two  sections  had  always  been 
blended  together  into  one  clear  and  comprehensive  para- 
graph. Referring  to  the  same  subject,  aad  standing,  as  they 
always  have,  in  the  same  statute,  they  must  undoubtedly 


1  5  Statutes  at  Large,  Ch.  45,  Sec- 
tions 7  and  9,  p.  193. 

2  16  Statutes  at  Large,  Ch.  230, 


Sections  54  and  60,  p.  206;  Taylor  v. 
Archer,  8  Blatch,  318,  1871. 

175 


176  DISCLAIMERS.  [CHAP.  VIII. 

be  construed  together ;  l  and  the  law  they  embody, 
must  be  set  forth,  by  extracting  from  both  sections,  all  the 
material  meaning  of  both,  and  by  incorporating  that  mean- 
ing, together  with  the  case  law  of  the  subject,  into  one 
systematic  explanation.  Let  that  therefore  be  the  present 
attempt. 

§  193.  Whenever  through  inadvertence,  accident,  or  mis- 
take, and  without  any  fraudulent  or  deceptive  intention,  a 
patentee  has,  in  his  specification,  claimed  materially  more 
than  that  of  which  he  was  the  first  inventor,  his  patent  shall 
be  valid  for  whatever  is  justly  his  own ;  and  every  such 
patentee,  his  executors,  administrators,  or  assigns,  whether 
of  the  whole  or  any  sectional  interest  in  the  patent,  may 
maintain  a  suit  at  law  or  in  equity,  for  the  infringement  of 
such  part,  if  it  is  a  material  and  substantial  part  of  the 
thing  patented,  and  is  definitely  distinguishable  from  the 
parts  claimed  without  right.  But  in  every  such  case,  in 
which  a  judgment  or  decree  shall  be  rendered  for  the 
plaintiff,  no  costs  shall  be  recovered,  unless  the  proper 
disclaimer  was  entered  in  the  Patent  Office,  before  the 
commencement  of  the  suit.  But  no  patentee  shall  be 
entitled  to  maintain  any  such  suit,  if  he  has  unreasonably 
neglected  or  delayed  to  enter  a  disclaimer.  And  any  such 
patentee,  his  heirs  or  assigns,  whether  of  the  whole  or  of 
any  sectional  interest  therein,  may,  on  payment  of  the  fee 
required  by  law,  make  disclaimer  of  such  parts  of  the  sub- 
ject-matter of  the  patent,  as  he  shall  not  choose  to  longer 
claim,  stating  therein  the  extent  of  his  interest  in  such 
patent.  Such  disclaimer  shall  be  in  writing,  attested  by 
one  or  more  witnesses,  and  recorded  in  the  Patent  Office, 
and  shall  thereafter  be  considered  a  part  of  the  original 
specification,  to  the  extent  of  the  interest  possessed  by  the 
disclaimant  and  by  those  claiming  under  him  after  the  record 
thereof.  But  no  such  disclaimer  shall  affect  any  action 
pending  at  the  time  of  its  being  filed,  except  so  far  as  may 


1  Hailes  «.  Stove  Co.  123  U.  8.      145  U.  S.  41, 1892. 
588,   1887;    Sessions  v.   Romadka, 


CHAP.  VIII.]  DISCLAIMERS.  177 

relate  to  the  question  of  unreasonable  neglect  or  delay  in 
filing  it.1 

§  194.  The  primary  fact  which  brings  the  law  stated  in 
the  last  section  into  play,  is  the  claiming  by  a  patentee  of 
materially  more  in  his  patent  than  he  was  entitled  to  claim.2 
Such  errors  may  spring  from  inadvertence.  That  is  to  say, 
they  may  spring  from  failure,  on  the  part  of  the  writer  of 
the  claims,  to  exercise  proper  care  in  penning  them.  So 
also,  they  may  arise  from  accident :  from  chances  against 
which  even  diligent  care  cannot  always  guard.  But  mis- 
take is  the  most  common  source  of  such  errors  ;  and  such 
errors  may  arise  from  mistake  of  fact  or  from  mistake  of 
law.3 

§  195.  Mistakes  of  fact,  relative  to  how  much  of  a  de- 
scribed process,  machine  or  manufacture  was  first  invented 
by  its  patentee,  frequently  follow  from  lack  of  full  informa- 
tion touching  what  was  previously  invented  by  others  in  the 
same  department  of  the  useful  arts.  Litigation  may  alone 
disclose  the  fact  that  the  patentee's  claims  are  too  numerous 
or  too  broad  to  be  consistent  with  novelty.  Whenever  this 
occurs,  it  is  clear  that  the  patentee  ought  no  longer  to 
appear  to  hold  an  exclusive  right  to  anything  which  he  was 
not  the  first  to  invent.  To  this  end,  the  statute  provides 
that  he  must  disclaim  that  part,  within  a  reasonable  time, 
or,  in  default  thereof,  must  suffer  the  statutory  conse- 
quences. On  the  other  hand  it  is  equally  clear,  that  if  the 
patentee  is  willing  to  eliminate  from  his  claims,  everything 
which  later  information  shows  had  been  invented  before 
him,  he  ought  to  be  allowed  to  retain  his  exclusive  right  to 
the  residue.  To  this  end,  the  statute  provides,  that  if  within 
a  reasonable  time,  he  disclaims  what  was  another's,  he  shall 
be  enabled  to  enforce  his  patent  as  far  as  it  covers  what 
was  his  own  invention.  But  a  disclaimer  cannot  confine 


1  Revised  Statutes,  Sections  4917  Rep.  835,  1889. 

and  4922  blended  together.  s  Electrical  Accumulator  Co.  •. 

2  Hailes  t>.  Stove  Co.  123  U.  S.  Julien  Electric  Co.  38  Fed.  Rep. 
588,  1887;  Brush  Electric  Co.  e.  Ft.  134,  1889. 

Wayne  Electric  Light  Co.  40  Fed. 


178  DISCLAIMEKS.  [CHAP.  VIII. 

a  claim  to  ground  which  does  not  appear  in  the  patent  to 
constitute  an  invention  ;  even  where  that  ground  is  narrower 
than  that  which  was  originally  claimed  in  the  patent. 

§  196.  A  mistake  of  law,  which  consists  in  claiming  some- 
thing not  patentable,  may  also  be  remedied  by  disclaimer.1 
The  law  which  requires  and  permits  a  patentee  to  disclaim, 
is  not  penal  but  remedial.  It  is  intended  for  the  protection 
of  the  patentee,  as  well  as  for  the  protection  of  the  public. 
The  evil  to  be  remedied  is  the  same,  where  a  patentee  has 
claimed  more  than  he  ought,  whether  that  result  sprang 
from  the  fact  that  another  invented  it  before  him,  or  sprang 
from  the  fact  that  what  lie  produced  was  not  an  invention 
at  all.  For  this  reason,  the  Supreme  Court  held  that  the 
eighth  claim  of  Morse  might  be  disclaimed,  after  having 
been  held  void  for  want  of  patentability,  with  the  same 
effect  as  though  it  had  been  held  void  for  want  of  novelty. 
The  same  reason  would  also  permit  a  patentee  to  disclaim 
any  claim  which  is  void  for  want  of  invention.  Indeed  the 
statute  expressly  applies  to  such  a  case,  for  no  man  can  be 
the  first  inventor  of  anything  which  is  not  an  invention. 
He  may  be  its  first  discoverer,  if  it  is  a  law  of  nature,  or  its 
first  constructor,  if  it  is  a  product  of  mere  mechanical  skill, 
but  its  first  inventor  he  cannot  be.  And  a  mistake  of  law, 
which  consisted  in  unlawfully  claiming,  in  one  patent, 
several  independent  inventions,  may  be  remedied  by  dis- 
claiming enough  claims  to  give  to  the  patent  the  necessary 
unity.8 

§  197.  There  appears  to  be  no  warrant  in  the  statute,  for 
disclaiming  any  claim  which  is  void  for  want  of  utility,  and 
for  no  other  cause.  An  inventor  of  a  new  thing  may  gen- 
erally ascertain  its  character  in  point  of  utility  before  apply- 
ing for  a  patent.  If  he  can  do  so,  he  ought  to  do  so,  and 
thus  shield  the  public  from  a  waste  of  time  involved  in 
examining  and  judging  useless  contrivances.  Where  a 
patent  has  but  one  claim,  and  where  the  matter  covered  by 

1  O'Reilly  v.  Morse,  15  Howard,  2  Sessions  v.  Romadka,  145  U.  S. 
120,  1853.  40,  1892. 


CHAP.  VIII.]  DISCLAIMERS.  179 

that  claim  is  useless,  no  disclaimer  could  make  that  patent 
valid.  Where  a  part  only  of  the  claims  of  a  patent  are 
void  for  want  of  utility,  and  for  no  other  cause,  the  void 
claims  are  not  injurious  to  the  valid  ones,  and  therefore  no 
disclaimer  is  needed  in  any  such  case.  Where  a  claim  pur- 
ports to  cover  a  thing  constructed  in  either  of  several  ways, 
and  where  that  thing  is  useless  if  constructed  in  one  of 
those  ways,  and  useful  if  constructed  in  another,  the  claim 
cannot  be  limited  to  the  useful  construction,  by  means  of 
any  disclaimer ;  for  it  is  not  the  office  of  a  disclaimer  to 
reform  or  to  alter  the  description  or  claim  of  an  invention.1 
Its  function  is  to  eliminate  from  letters  patent  all  claims  for 
inventions  which  were  not  new  with  the  patentee,  and  all 
claims  for  things  which  were  not  inventions  with  him.2 
And  no  disclaimer  is  necessary  where  some,  but  not  all,  of 
the  claims  of  a  patent  are  void,  by  reason  of  constructive 
abandonment,  resulting  from  public  use  or  sale  of  the  sub- 
jects of  those  particular  claims,  more  than  two  years  prior 
to  the  application  for  the  patent.3 

Where  two  patents  are  applied  for  on  the  same  day,  and 
are  granted  on  the  same  day,  to  the  same  inventor,  for  the 
the  same  invention ;  the  owner  of  them  has  the  lawful 
power  to  choose  which  one  of  those  patents  he  will  retain, 
but  he  must  somehow  relinquish  the  other.4  He  cannot 
rid  himself  of  his  superfluous  patent,  in  such  a  case,  by 
means  of  a  (Disclaimer  under  the  disclaimer  statutes ;  but 
he  can  undoubtedly  do  so  by  means  of  a  surrender  of  his 
superfluous  patent  uncoupled  with  any  application  for  a 
reissue  thereof. 

§  198.  The  right  to  file  disclaimers  is  expressly  limited  to 
cases  where  the  actual  invention  of  the  patentee  is  a  material 
and  substantial  part  of  the  thing  patented.5  Parts  of 

1  Hailes  0.  Stove  Co.  123  U.    8.      Fed.  Rep.  72,  1892. 

587,  1887;  White  v.  Mfg.  Co.  24  4  Electrical  Accumulator  Co.  v. 
Off.  Gaz.  205,  1883.  Brush  Electric  Co.  52  Fed.  Rep. 

2  Cartridge  Co.  c.  Cartridge  Co.      138,  1892. 

112  U.  S.  642,  1884.  *  Revised  Statutes,  Sections  4917 

3  Whitney  v.   B.  &  A.  R.  Co.  50      and  4922. 


180  DISCLAIMERS.  [CHAP.  VIII. 

combinations  do  not  come  within  this  category,  for  a  com- 
bination is  an  entirety ;  and  if  one  of  the  elements  is  given 
up,  the  thing  claimed  disappears.  The  disclaimer  provisions 
cannot  be  made  to  modify  and  thereby  save  combination 
claims,  for  unless  the  combination  is  maintained,  the  whole 
of  the  invention  fails.1 

§  199.  The  statutes  also  provide,  that  in  order  to  save  a 
patent  by  a  disclaimer,  the  part  retained  must  be  definitely 
distinguishable  from  the  part  eliminated.  It  does  not  fol- 
low, however,  that  each  claim  of  a  patent  must  be  wholly 
disclaimed  or  wholly  retained.  On  the  contrary,  there  are 
cases  where  two  or  more  inventions  are  covered  by  one 
claim ;  and  in  such  cases,  a  disclaimer  may  be  made  to 
expunge  one  of  those  inventions  from  that  claim,  without 
disturbing  the  others.8 

In  the  first  of  the  cases  just  cited,  the  claim  was  :  "  The 
forming  of  packing  for  pistons  or  stuffing  boxes  of  steam 
engines,  and  for  like  purposes,  out  of  saturated  canvas,  so 
cut  that  the  thread  or  warp  shall  run  in  a  diagonal  direc- 
tion from  the  line  or  centre  of  the  roll  of  packing,  and  rolled 
into  form,  either  in  connection  with  the  india-rubber  core, 
or  other  elastic  material,  or  without,  as  herein  set  forth." 
Litigation  showed  that  such  a  thing,  without  a  core,  was 
old,  and  the  patentee  therefore  entered  a  disclaimer  to  that 
part  of  the  claim  which  covered  the  packing  without  the 
core.  Justice  BLATCHFOED  held  that  disclaimer  to  be  proper, 
and  to  be  effectual. 

In  the  second  case  cited,  the  claim  was  "  The  use  and 
application  of  glue,  or  glue  composition,  in  the  tubing,  sub- 
stantially as  described,  for  the  purpose  of  making  the  flex- 
ible tubing  gas  tight,  whether  of  cloth  or  rubber  or  other 
gum."  During  the  pendency  of  the  suit,  and  after  consider- 
able testimony  had  been  taken,  a  disclaimer  was  entered  to 


1  Vance  v.  Campbell,  1  Black.  429,  318,1871;   Electrical  Accumulator 

1861.  Co.  v.  Julien  Electric  Co.  38  Fed. 

a  Tuck  «.  Bramhill,  6  Blatch.  95,  Rep.  134. 1889. 
1868;  Taylor  v.  Archer,  8  Blatch. 


CHAP.  VIII.]  DISCLAIMERS.  181 

that  part  of  the  claim  of  the  patent  which  claimed  as  an 
improvement  in  flexible  tubing  for  illuminating  gas,  the  use 
and  application  of  glue ;  thereby  limiting  the  claim  to  the 
use  and  application  of  glue  composition  in  the  tubing,  sub- 
stantially as  described.  This  disclaimer  was  also  upheld 
by  the  same  distinguished  chancellor  who  upheld  the  dis- 
claimer in  the  other  case. 

§  200.  There  is  one  difference  between  the  two  disclaimer 
sections,  of  the  Revised  Statutes,  which  it  is  now  requisite 
to  mention.  Section  4917  contemplates  disclaimers  as 
being  proper  whenever  a  patentee  has  claimed  more  than 
that  of  which  he  was  the  first  inventor  ;  while  Section  4922 
attends  only  to  cases  wherein  the  excess  is  a  material  or 
substantial  part  of  the  thing  patented.  This  qualification 
should  be  inserted  in  the  two  sections,  as  construed  together, 
because  Section  4922  is  the  only  one  that  prescribes  any 
evil  result  from  a  failure  to  disclaim.  Neither  section  visits 
any  infliction  on  the  patentee,  for  omitting  to  disclaim  any- 
thing which  is  an  immaterial  part  of  the  thing  patented. 
If,  therefore,  a  patentee  omits  to  disclaim  such  a  part  when 
he  discovers  it  to  have  been  known  before  his  invention 
thereof,  or  learns  that  it  is  not  an  invention  at  all,  he  thereby 
loses  no  right,  and  incurs  no  inconvenience.1  To  file  a  dis- 
claimer, in  such  a  case,  is  an  act  which  is  at  once  harmless 
and  unnecessary. 

§  201.  Reissue  patents,  as  well  as  original  patents,  are 
entitled  to  the  benefits  of  the  law  relevant  to  disclaimers ; 
and  that  too,  even  where  the  matter  disclaimed  was  not 
claimed  in  the  original,  but  only  in  a  reissue  granted  upon 
its  surrender.2  But  no  claim  which  was  in*  an  original 
patent,  and  is  absent  from  a  reissue  thereof,  can  be 
reclaimed  by  a  disclaimer  of  the  changes  made  by  the 


.  Wiles,  2  Blatch.  199,1851;  gent.  117  U.  S.   553,    1886;    Schil- 

Peek  v.  Frame,  5  Fisher,  212,  1871.  inger   v.    Gunther,   17   Blatch.   69 

2  O'Reilly  v.  Morse,  15  Howard,  1879;  Tyler  v.   Galloway,    12  Fed. 

62, 1853;  Gage  v.  Herring,  107  U.  S.  Rep.  567,  1882. 
646,    1882;    Yale  Lock  Co.  v.  Sar- 


182  DISCLAIMERS.  [CHAP.  VIII. 

reissue.1  Where  an  original  patent  was  surrendered,  and 
then  reissued  in  several  divisions ;  that  is  to  say,  where 
several  reissue  patents  were  granted  for  separate  inventions 
described  in  an  original  patent,  a  suit  based  upon  one  of 
those  divisions  will  be  unaffected  by  the  fact  that  a  claim 
in  another  division,  is  invalid  for  want  of  novelty,  or  for 
want  of  invention.  The  statute  relevant  to  disclaimers  has 
no  application  to  such  cases.2 

§  202.  Fraudulent  or  deceptive  intention,  if  it  existed  on 
the  part  of  a  patentee,  when  claiming  materially  more  than 
that  of  which  he  was  the  first  inventor,  or  when  claiming 
that  which  'was  not  patentable,  will  rightly  prevent  him 
from  receiving  any  benefit  from  a  disclaimer.  The  statu- 
tory provision  is  in  harmony  with  the  principles  of  equity : 
a  system  which  always  declines  to  extract  persons  from 
trouble  which  arose  from  their  own  moral  turpitude. 

§  203.  The  statement  in  Section  4917,  that  under  the  cir- 
cumstances therein  mentioned,  a  patentee's  patent  shall  be 
valid  as  to  all  that  part  of  the  invention  which  is  truly  and 
justly  his  own,  is  to  be  construed  in  connection  with  the 
provision  in  Section  4922,  that  the  patentee  shall  not  be 
entitled  to  recover  in  any  suit,  if  he  unreasonably  neglects 
or  delays  to  enter  a  disclaimer.  When  so  construed,  the  two 
sections  enact  that  where  a  patentee  claims  materially  more 
than  that  which  he  was  the  first  to  invent,  his  patent  is  void, 
unless  he  has  preserved  the  right  to  disclaim  the  surplus, 
and  that  he  may  fail  to  preserve  that  right,  by  unreasonable 
neglect  or  delay  to  enter  a  disclaimer  in  the  Patent  Office. 

§  204.  Neglect  or  delay  to  file  a  necessary  disclaimer,  be- 
gins when  knowledge  is  brought  home  to  the  patentee,  that 
the  inventor  upon  whose  account  the  patent  was  granted, 
was  not  the  first  inventor  of  a  particular  thing  claimed  in 
the  patent,  and  material  to  the  subject  of  the  patent  as  a 
whole.3  If,  however,  there  is  reasonable  ground  for  difference 

1  McMurray  v.  Mallory,  111  U.  8.  3  O'Reilly  v.  Morse,  15  Howard, 
109,  1883.  121,  1853;  Singer  *.    Walmsley,  1 

2  Elastic  Fabrics  Co.«.  Smith.  100  Fisher,  558,  1860;  Parker  v.  Stiles, 
U.  8.  Ill,  1879.  5  McLean,  44,  1849. 


CHAP.  VIII.]  DISCLAIMERS.  183 

of  opinion  relevant  to  the  question  whether  the  prior 
patent,  or  the  prior  process,  or  the  prior  thing,  so  brought 
home  to  the  knowledge  of  the  patentee,  really  negatives  the 
novelty  of  anything  claimed  by  him ;  then  unreasonable 
delay  to  file  a  disclaimer  will  not  begin  until  that  question  is 
finally  settled  by  the  courts.1  Even  a  still  further  very  short 
delay  is  not  fatal  to  the  right  to  disclaim  ;2  and  if  the  patent 
has  expired  when  the  occasion  for  a  disclaimer  is  estab- 
lished, no  disclaimer  can  be  filed  or  is  necessary.3  The 
question  whether  the  delay  to  enter  a  disclaimer,  in  a  par- 
ticular case,  was  or  was  not  unreasonable,  is  a  mixed  ques- 
tion of  law  and  fact,  to  be  decided  by  the  jury  in  accordance 
with  proper  instructions  from  the  court.4  In  the  case  of 
Seymour  v.  McCormick,5  the  Supreme  Court,  when  speak- 
ing of  the  question  of  the  necessity  for  a  disclaimer  in  that 
case,  and  of  the  question  of  unreasonable  delay  in  enter- 
ing one,  said :  "  Under  the  circumstances,  the  question  is 
one  of  law."  The  peculiar  collocation  of  the  paragraph, 
has  caused  some  courts,6  to  suppose  that  the  question  thus 
characterized,  was  the  question  of  delay  ;  but  really  it  must 
have  been  the  question  of  necessity.  The  latter  depended 
wholly  upon  the  construction  of  the  patent,  and  was  there- 
fore a  question  of  law.  Whether  or  not  a  particular  in- 
stance of  delay  was  unreasonable,  must  largely  depend  upon 
the  circumstances  which  surrounded  the  person  chargeable 
therewith.  What  those  circumstances  were  is  a  question 
of  fact.  Whether  they  constituted  an  excuse  for  the  delay 
is  a  question  of  law.  Whether  or  not  a  particular  instance 


1  Seymour  v.  McCormick,  19  How  Story,  122,  1844;  Burden  v.  Corn- 
ard,  106,  1856;  Potter  t>.  Whitney,  ing,    2    Fisher,    477,    1864;    Office 
1  Lowell,  87,  1866;  Hill  v.  Biddle,  Specialty  Co.  v.  Globe  Co.  65  Fed. 
27  Fed,  Rep.  561, 1886.  Rep.  605,  1895. 

2  Kittle  v.  Hall,  30  Fed.  Rep.  39,  &  Seymour  v.  McCormick,  19  How- 
1887.  ard,  106, 1856. 

3  Yale  Lock  Co.  v.  Sargent,  117  «  Singer  v.  Walmsley.  1  Fisher, 
U.  S.  553,  1885.  558,  1860;  Parker  «.  Stiles,  5  Mc- 

4  Brooks  v.  Jenkins,  3  McLean,  Lean,  44,  1849. 
449,  1844;    Washburn  v.   Gould,  3 


184  DISCLAIMERS.  [CHAP.  VIII. 

of  delay  to  enter  a  necessary  disclaimer  was  unreasonable, 
is  therefore  a  mixed  question  of  law  and  of  fact. 

§  205.  No  costs  can  be  recovered  in  any  infringement 
suit,  the  final  decision  of  which  shows  a  necessity  for  a  dis- 
claimer, unless  such  a  disclaimer  was  entered  in  the  Patent 
Office  before  the  commencement  of  the  suit.1  This  rule 
applies  even  to  cases  where  the  delay  to  enter  the  dis- 
claimer was  not  unreasonable.2  But  a  verdict  on  all  the 
claims  of  a  patent  entitles  the  plaintiff  to  costs,  even  if, 
after  that  verdict,  he  files  a  disclaimer  to  one  or  more  of 
the  claims  of  that  patent.3 

Judge  LOWELL  remarked  that  where  a  plaintiff  sues  on  a 
part  of  the  claims  of  his  patent  only,  the  defendant  will  not 
be  permitted  to  raise  any  issue  relevant  to  the  validity  of 
any  other  claim,  with  intent  to  show  a  necessity  for  a  dis- 
claimer, and  thus  to  escape  costs.4  His  Honor  based  this 
opinion  on  the  fact  that  more  expense  might  be  incurred  in 
litigating  such  a  collateral  issue,  than  would  be  justified  by 
the  amount  of  the  costs  depending  upon  its  decision.  But 
general  rules  of  law  can  hardly  be  based  on  considerations 
of  what  is  expedient  in  a  part  only  of  the  cases  to  which 
those  rules  purport  to  apply.  It  may  happen  that  the 
costs  involved  in  a  particular  litigation  are  large,  while  the 
expense  involved  in  proving  a  necessity  for  a  disclaimer  of 
some  one  claim  of  the  patent  is  small.  The  difference 
between  the  two  sums  may  sometimes  be  measured  \)j  thou- 
sands of  dollars.  A  judgment  or  a  decree  may  be  largely 
lessened,  and  justly  lessened,  if  a  defendant  is  permitted  to 
prove  a  necessity  for  a  disclaimer  of  a  claim  not  sued  upon. 
In  view  of  these  considerations,  it  is  possible  that  the  law 
will  finally  be  settled  otherwise  than  as  Judge  LOWELL'S 
remark  would  seem  to  forecast. 


1  Revised  Statutes,  Section  4922;  121,  1853;  Yale  Lock  Co.  v.  Sar- 
Reed  v.  Cutter,  1  Story,  591,  1841;  gent,  117  U.  8.  553,  1885. 
Burdett  v.  Estey,  5  Bann.  &  Ard.         8  Peek  v.  Frame,  5  Fisher,  212, 
309,  1880;  Proctor  v.  Brill,  16  Fed.  1871. 

Rep.  791,  1883.  4  American  Bell  Telephone  Co. 

2  O'Reilly  v.  Morse,  15  Howard,  «.  Spencer,  8  Fed.  Rep.  512,  1881. 


CHAP.  VIII.]  DISCLAIMERS.  185 

§  206.  Disclaimers  are  required  to  state  the  extent  of  the 
interest  which  is  held  by  the  disclaimant  in  the  patent 
involved.1  If,  however,  the  disclaimant  is  the  original  pat- 
entee, and  the  disclaimer  states  that  fact,  and  is  silent 
respecting  any  transfer  of  any  part  of  it,  the  fair  implication 
is  that  he  still  owns  the  whole,  and  that  implication  is  a 
sufficient  statement  of  the  interest  of  the  patentee.2  So 
also,  if  an  executor  or  administrator,  in  whose  name  a  pat- 
ent has  been  extended,  states  in  his  disclaimer  that  he  is 
the  patentee,  and  refers  to  the  patent  as  showing  his  inter- 
est, that  is  a  sufficient  statement  of  his  interest  in  the  pat- 
ent.3 But  if  only  one  of  several  joint  owners  or  owners  in 
common  of  a  patent  should  file  a  disclaimer,  no  other  owner 
could  avail  himself  of  its  benefits,  nor  could  it  affect  a  suit 
brought  by  all  the  owners  jointly.4 

§  207.  The  construction  of  a  patent  after  a  disclaimer  has 
been  properly  entered,  must  be  the  same  that  it  would  have 
been  if  the  matter  so  disclaimed  had  never  been  claimed.5 
No  disclaimer,  in  order  to  be  effectual,  needs  to  eliminate 
anything  from  the  description ;  though  no  harm  will  follow 
from  such  elimination,  if  it  is  confined  to  matter  which  is 
disclaimed,  and  which  is  not  needed  to  show  the  nature  of 
the  invention  which,  after  disclaimer,  the  patent  continues 
to  cover.6 

§  208.  Disclaimers  may  be  filed  pending  a  suit  on  the 
patent,7  but  in  that  event  the  plaintiff,  even  if  he  prevails 
in  the  suit,  can  recover  no  costs.8  The  filing  of  a  disclaimer 
at  that  stage  of  affairs  does  not  affect  the  pending  action, 
except  so  far  as  it  may  bear  upon  the  question  whether  or 


1  Revised  Statutes,  Section  4917.  1876;  Schwarzwalder  v.  Filter  Co. 

*.  Silsby  v.  Foote,  14  Howard,  221,  66  Fed.  Rep.  157,  1895. 

1852.  6Schillinger0.  Guuther,  17  Blatch. 

3  Brooks  0.  Jenkins,  3  McLean,  69,  1879. 

432,  1844.  7  Filley  v.  Stove  Co.  30  Fed.  Rep. 

*  Wyeth  t>.  Stone,  1  Story,  294,  434,  1887. 

1840.  8  Smith  v.  Nichols,  21  Wallace, 

6  Dunbar  «.  Myers,  94  U.  S.  187,  117,  1874. 


186  DISCLAIMERS.  [CHAP.  VIII. 

not  there  was  unreasonable  delay  before  filing  it.1  That 
question  is  an  open  one  until  decided  on  its  merits,  regard- 
less of  whether  the  disclaimer  was  filed  before  or  after  the 
bringing  of  the  suit.2  The  sooner  a  necessary  disclaimer 
is  filed,  the  less  danger  exists  that  the  preceding  delay  will 
be  held  unreasonable.  For  that  reason,  and  for  that  reason 
alone,  it  is  sometimes  wiser  to  file  a  disclaimer  pending  a 
suit  than  to  wait  till  the  case  is  heard,  or  still  longer,  till  it 
is  decided. 

§  209.  An  important  question  arises  when  a  Circuit  Court, 
before  any  disclaimer  has  been  filed,  decides  that  a  part 
of  the  claims  of  the  patent  in  suit  are  valid,  and  have  been 
infringed  by  the  defendant,  while  another  part  are  void 
for  want  of  novelty,  or  for  want  of  invention,  and  ought 
therefore  to  be  disclaimed.  Ought  the  chancellor  in  such 
a  case  to  enter  a  decree  for  an  injunction  and  an  account 
on  the  valid  claims,  and  allow  the  complainant  to  disclaim 
the  others  or  not,  as  he  deems  most  prudent?  Or  ought 
the  chancellor  to  refuse  both  the  injunction  and  the  account 
till  the  complainant  shall  have  filed  a  disclaimer?  Or 
ought  the  chancellor  to  grant  an  injunction  whether  the 
complainant  disclaims  or  not,  while  refusing  an  account 
till  after  he  shall  have  done  so  ?  Or  ought  the  chancellor, 
in  case  the  complainant  declines  to  disclaim,  to  refuse  an 
injunction,  and  grant  a  decree  for  an  account?  The  second 
of  these  courses  has  been  the  practice  followed  by  Justice 
BLATCHFORD ; 3  and  by  Judge  WALLACE;4  Judge  SHIPMANS 
and  Judge  WHEELER,6  and  also  by  Justice  MATTHEWS  and 


1  Revised  Statutes,  Section  4917;  Rep.  621,  1882;    Union  Paper  Bag 
Sessions  v.  Romadka,  145  U.  S.  41,  Mach.   Co.  v.  Waterbury,  39  Fed. 
1892;  Tuck  v.  Bramhill,  6  Blatch.  Rep.  392,   1889;    Steam    Gauge  & 
95,  1868.  Lantern  Co.  v.  Kennedy,  41  Fed. 

2  Reed  v.  Cutter,  1   Story,   590,  Rep.   39,  1889;    Smead   v.   School 
1841.  District,  44  Fed.  Rep.  617,  1890. 

3  Myers  ».  Frame,  8  Blatch.  446,  *  Tyler  v.  Galloway,  12  Fed.  Rep. 
1871;  Burdett  ®.  Estey,  15  Blatch.  567,  1882. 

349, 1878;  Christman  v.  Rumsey,  17  6  Matthews  v.   Spangenberg,   14 

Blatch.  148,  1879.  Fed.  Rep.  350, 1882;  Hake  v.  Brown, 

4  Brainard  v.  Cramme,  12  Fed.  37  Fed.  Rep.  783,  1889. 


CHAP.  VIII.]  DISCLAIMERS.  187 

Judge  SAGE.:  But  Judge  COXE  said,  in  1891,2  that  this 
practice  had  always  seemed  to  him  to  be  an  arbitrary  one  ; 
and  in  1893  he  spoke  of  it  as  "the  arbitrary  and,  to  my  mind, 
unjust  rule  which  obtains  in  this  circuit."3  And  in  speaking 
of  the  case  in  which  Judge  COXE  used  the  language  just 
quoted,  Judge  DALLAS  said  in  1894,  "  That  decree,  however, 
was  in  fact  entered  without  disclaimer  being  made,  and 
doubtless  for  the  reason  that  the  learned  judge  had  observed, 
after  his  opinion  had  been  delivered,  that,  while  the  statute 
deprives  the  plaintiff  of  costs,  in  such  cases,  it  does  not 
authorize  the  requirement  of  the  disclaimer  of  unfounded 
claims,  as  a  condition  of  granting  relief  upon  those  which 
are  supported."4  The  third  course  was  that  adopted  by 
Judge  CADWALLADER.S  The  point  has  never  been  decided 
by  the  Supreme  Court;  though  the  action  of  that  tribunal, 
in  O'Reilly  v.  Morse,6  appears  to  favor  the  first  of  the  four 
suggested  views.  The  subject  is  interesting,  and  when 
the  law  relevant  thereto  is  finally  settled,  a  number  of  con- 
siderations will  require  to  be  weighed. 

The  second  view  of  the  law  operates  to  deny  an  appeal 
from  the  Circuit  Court  upon  the  question  of  the  necessity 
for  a  disclaimer.  If  the  patentee  submits  to  the  condition 
imposed  by  the  chancellor,  and  if,  in  order  to  secure  an 
injunction  and  an  account  on  his  confessedly  valid  claims, 
he  disclaims  the  others,  and  if  the  Supreme  Court,  on  an 
appeal  by  the  defendant,  holds  that  no  disclaimer  was  nec- 
essary in  the  case,  it  will  be  impossible  to  rectify  the  error, 
for  there  is  no  way  to  recall  a  disclaimer. 

The  third  view  is  open  to  the  same  objections  as  the 
second,  but  in  a  diminished  degree ;  a  degree  diminished, 
in  any  particular  case,  in  the  same  proportion  that  the 
value  of  an  injunction,  bears  to  the  value  of  an  injunction 


1  Odell  v.  Stout,  22  Fed  Rep.  169,  4  Williames  v.  McNeely,  64  Fed. 
1884.  Rep.  768,  1894. 

2  Brush  Electric  Co.  v.  Accumu-  B  Aikeu  v.  Dolan,  8  Fisher,  207, 
tator  Co.  47  Fed.  Rep.  56, 1891.  1867. 

3  Ballard  v.  McCluskey,  58  Fed.  6  O'Reilly  v.  Morse,  15  Howard, 
Rep.  884,  1893.  121,  1853. 


188  DISCLAIMERS.  [CHAP.  VIII. 

and  an  account.  It  is  also  open  to  the  objection  of  incon- 
sistency, for  there  is  probably  no  reason  for  refusing  an 
account,  which  does  not  apply  with  equal  force  to  an  in- 
junction. 

The  fourth  view  seems  still  less  reasonable  than  the  third, 
because  an  account  is  incidental  to  an  injunction,  and  if  no 
injunction  is  granted,  the  power  to  enter  a  decree  for  an 
account  is  sometimes  wanting.  • 

The  first  view  would  probably  be  found  to  be  more  con- 
sistent with  convenience  and  with  justice  than  either  of  the 
others.  Whenever  a  Circuit  Court  decides,  that  while  some 
of  the  claims  of  a  patent  are  valid  and  have  been  infringed, 
others  are  void  and  should  be  disclaimed ;  that  decision  is 
right  or  it  is  wrong.  If  it  is  wrong,  the  patentee  ought  to 
have  an  opportunity  to  get  it  corrected  by  an  appellate 
court.  On  the  other  hand,  if  that  decision  is  right,  it  will 
be  either  obviously  right  or  questionably  right.  If  it  is 
obviously  right,  and  if  the  patentee  insists  on  taking  a 
decree  without  filing  a  disclaimer,  he  will  do  so  at  his  peril ; 
for  the  appellate  court  will  probably  hold,  on  the  defend- 
ant's appeal,  that  the  omission  to  disclaim  was  unreasonable, 
and  the  whole  patent  therefore  void.  If  the  decision  is 
questionably  right ;  that  is  to  say,  if  there  is  room  for  dif- 
ference of  intelligent  opinion  upon  the  point,  then  the  pat- 
entee ought  not  to  be  forced  to  disclaim  till  the  appellate 
court  shall  have  decided  that  question  against  him.  No 
ultimate  injustice  would  result  to  either  litigant,  were  the 
first  of  the  four  courses,  adopted  by  the  Circuit  Courts ; 
whereas  the  adoption  of  either  of  the  others,  involves  a 
denial  of  the  right  of  appeal ;  a  right  provided  by  the 
statute  in  all  cases  touching  patents.1 

1  Revised  Statutes,  Section  699. 


CHAPTEE  IX. 

REISSUES. 


210.  Beginning  of   the  history  of 
reissues. 

211.  First  statute  providing  for  re- 
issues, 1832. 

212.  Reissues  under  the  Patent  Act 
of  1836. 

213.  Amendments  made  in  the  re- 
issue law  by  the  Patent  Act 
of  1837. 

214.  Reissues  under  the  Patent  Act 
of  1870. 

215.  Reissues  under  the    Revised 
Statutes. 

216.  Subjects  of  reissues. 
216a.  Narrowed  reissues. 

217.  The    words    "  specification," 
"defective,"  and  "insufficient" 
defined. 

218.  Faults  which  justify  reissues. 
218a.  Reissues    correcting    patents 

without  changing  their  scopes. 

219.  Broadened  reissues. 

220.  Inadvertence,    accident,    and 
mistake. 

221.  Question  of  the  conclusiveness 
of  the  Commissioner's  decis- 
ion relevant  to  existence  of  re- 
issuable  faults,  and  relevant  to 
the  existence  of  inadvertence, 
accident,  or  mistake. 

226.  The  doctrine  of  the  case  of 
Miller  v.  Brass  Co. 

227.  The  length  of  the  delay  con- 


templated by  the  doctrine  of 
Miller  v.  Brass  Co. 

229.  The  statute  relevant  to  two 
years'  prior  use  or  sale  has  no 
application  to  reissues  as  such. 

230.  Surrender  of  patent. 

231.  Effect  of  surrender  with,  and 
also  without,  reissue. 

232.  Reissues  of  reissued  patents 
and  of  extended  patents,  but 
not   of   expired    patents,   are 
proper. 

233.  Same  invention. 

239.  ' '  Where  there  is  neither  model 
nor  drawing." 

240.  New  matter. 

242.  Reissues  must  be  for  same  in- 
vention as  prior  reissues,  and 
also  for  same  invention  as  orig- 
inals. 

243.  Legal   presumption  of  same- 
ness of  invention. 

244.  Omission,  as  it  affects  same- 
ness of  invention. 

245.  Reissues  for  sub-combinations. 

246.  Reissues  for  single  devices. 

247.  Reissues  as  affected  by  sub- 
stitution of  equivalents. 

248.  Reissues  entitled  to  a  liberal 
construction. 

249.  Reissued  patents  may  be  valid 
as  to  some  claims  while  void 
as  to  others. 

189 


190 


REISSUES. 


[CHAP.  ix. 


250.  Executors,  administrators,  and 
assigns  may  procure  reissues. 

251.  One  of  several  executors  may 
procure  a  reissue. 

252.  Rights  of  assignees  in  reissues. 


253.  The  rights  of  grantees  in  re- 
issues. 

254.  The   legal    effect   of    reissued 
patents. 


§  210.  IN  1821  James  Grant,  of  Providence,  Bhode 
Island,  received  letters  patent  of  the  United  States  for  an 
improved  mode  of  manufacturing  hat  bodies.  In  1825  he 
presented  a  petition  to  Henry  Clay,  Secretary  of  State, 
stating  that  the  specification  of  his  patent  was  defective, 
and  praying  that  his  patent  might  be  cancelled,  and  a  new 
and  correct  one  granted,  embracing  the  same  improvements, 
so  far  as  they  were  set  forth  in  certain  new  specifications 
drawings  and  explanations  which  accompanied  the  petition. 
Though  there  was,  at  that  time,  no  statute  which  authorized 
any  such  proceeding ;  yet,  on  the  advice  of  William  Wirt, 
the  Attorney  General,  and  in  the  name  of  John  Quincy 
Adams,  the  President  of  the  United  States,  Mr.  Clay  can- 
celled the  letters  patent  of  Mr.  Grant,  and  thereupon  issued 
to  him  new  letters  patent,  for  the  same  invention,  and  for 
the  residue  of  the  term  covered  by  the  original  document. 
Annexed  to  the  new  letters,  and  forming  part  thereof,  were 
the  new  specifications,  drawings  and  explanations,  which 
had  accompanied  Mr.  Grant's  petition. 

In  the  case  of  Grant  v.  B/aymond1  the  validity  of  this 
proceeding  was  called  in  question  in  the  Supreme  Court ; 
and  was  argued  in  the  negative  by  Daniel  Webster.  The 
Supreme  Court  sustained  the  validity  of  the  reissued 
patent,  on  the  general  spirit  and  object  of  the  patent  law  ; 
not  on  its  letter.  In  delivering  the  opinion  Chief  Justice 
MARSHALL  said :  "  If  the  mistake  should  be  committed  in 
the  Department  of  State,  no  one  would  say  that  it  ought 
not  to  be  corrected.  All  would  admit  that  a  new  patent, 
correcting  the  error,  and  which  would  secure  to  the  patentee 
the  benefits  which  the  law  intended  to  secure,  ought  to  be 
issued.  And  vet  the  act  does  not  in  terms  authorize  a  new 


Grant  v.  Raymond,  6  Peters.  243,  1832. 


CHAP.  IX.]  EEISSUES.  191 

i 

patent,  even  in  that  case.  Its  emanation  is  not  founded  on 
the  words  of  the  law,  but  it  is  indispensably  necessary  to 
the  faithful  execution  of  the  solemn  promise  made  by  the 
United  States.  Why  should  not  the  same  step  be  taken 
for  the  same  purpose,  if  the  mistake  has  innocently  been 
committed  by  the  inventor  himself?"  And  his  Honor 
further  said  :  "  If,  by  an  innocent  mistake,  the  instrument 
introduced  to  secure  his  privilege  fails  in  its  object,  the 
public  ought  not  to  avail  itself  of  this  mistake,  and  to  appro- 
priate the  discovery  without  paying  the  stipulated  considera- 
tion. The  attempt  would  be  disreputable  in  an  individual, 
and  a  Court  of  Equity  might  interpose  to  restrain  him." 

In  pursuance  of  the  doctrines  of  the  first  four  sentences 
quoted  above  from  Chief  Justice  MARSHALL,  the  Commis- 
sioner may  cancel  a  patent  and  issue  a  corrected  one  in  its 
stead,  where  the  first  one  was  caused,  by  an  inadvertent 
error  in  the  Patent  Office,  to  grant  less  to  the  inventor  than 
he  had  applied  for  and  was  entitled  to  receive,  and  where 
the  inventor  refuses  to  accept  the  patent  thus  limited.1 

§  211.  In  accordance  with  the  spirit  of  the  decision  in 
Grant  v.  Raymond,  and  within  a  few  months  after  that  de- 
cision was  made,  Congress  enacted  a  statute  to  regulate  the 
granting  of  reissued  letters  patent.2  That  statute  provided, 
in  effect,  that  whenever  any  patent  should  be  invalid  or  in- 
operative, because  the  inventor,  by  inadvertence,  accident 
or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, failed  to  conform  his  specification  to  the  then  ex- 
isting statutory  requirements ;  it  should  be  lawful  for  the 
Secretary  of  •  State,  upon  the  surrender  to  him  of  such 
patent,  and  the  delivery  to  him  of  a  sufficient  statutory 
specification,  to  cause  a  new  patent  to  be  granted  to  the 
same  inventor,  for  the  same  invention,  and  for  the  residue  of 
the  term  of  the  original  patent.  That  statute  also  provided 
that  the  right  to  receive  a  reissue,  should  extend  to  execu- 
tors, administrators  or  assigns  ;  and  that  the  reissue  patent 

1  Railway  Register  Mfg.  Co.  v.  2  4  Statutes  at  Large,  Ch.  162. 
Railroad  Co.  23  Fed.  Rep.  593, 1885.  Section  3,  p.  559. 


192  REISSUES.  [CHAP.  ix. 

should  be  liable  to  the  same  defences  as  the  original ;  and 
that  no  public  use  of  the  invention,  after  the  grant  of  the 
original  patent,  should  prejudice  the  right  of  the  patentee 
to  recover  for  infringement  of  the  reissue  patent,  committed 
after  the  grant  thereof. 

§  212.  The  Patent  Act  of  1836 '  repealed  all  prior  statutes 
relevant  to  patents,  and  provided  a  more  elaborate  system 
in  place  of  the  repealed  laws.  Section  13  of  that  Act  re- 
ferred to  reissues,  and  provided,  in  effect,  that  whenever 
any  patent  should  be  inoperative  or  invalid  because  the  in- 
ventor had,  by  inadvertence,  accident,  or  mistake,  and  with- 
out any  fraudulent  or  deceptive  intention,  made  his  descrip- 
tion or  specification  defective  or  insufficient,  or  had  claimed 
in  his  specification  more  than  he  had  a  right  to  claim  as 
new  ;  it  should  be  lawful  for  the  Commissioner  of  Patents, 
upon  the  surrender  to  him  of  such  patent,  to  cause  a  new 
patent  to  be  issued  to  the  same  inventor,  for  the  same  in- 
vention, in  accordance  with  the  inventor's  corrected  descrip- 
tion and  specification,  and  for  the  residue  of  the  term  of 
the  original  patent.  This  statute  also  provided  that  the 
right  to  receive  a  reissue  should  extend  to  executors,  ad- 
ministrators and  assigns,  and  that  the  reissued  patent, 
together  with  the  corrected  description  and  specification, 
should  have  the  same  effect  in  law,  on  the  trial  of  all  ac- 
tions thereafter  commenced  for  causes  subsequently  accru- 
ing, as  though  the  same  had  been  originally  filed  in  such 
corrected  form  before  the  issuing  of  the  original  patent. 

§  213.  The  Patent  Act  of  1837s  made  some  additions  to 
the  statute  of  1836,  relevant  to  reissues.  Section  5  recog- 
nized a  right  in  a  patentee  to  demand  and  receive  several 
reissued  patents  for  distinct  parts  of  the  subject-matter  of 
his  surrendered  patent.  And  Section  8  provided,  that  when- 
ever a  patent  should  be  returned  for  reissue,  the  claims 
thereof  should  be  subject  to  revision  and  restriction,  in. 
the  same  manner  as  were  original  applications  for  pat- 

1  5  Statutes  at  Large,  Ch.  357,  p.  3  5  Statutes  at  Large,  Ch.  45,  p. 
117.  191. 


CHAP.  IX.]  REISSUES.  193 

ents ;  and  that  the  Commissioner  should  not  grant  any  re- 
issue, until  the  applicant  should  have  entered  a  disclaimer, 
or  altered  his  claim,  in  accordance  with  the  decision  of  the 
Commissioner ;  and  that  the  applicant,  if  dissatisfied  with 
such  decision,  should  have  the  same  remedy  by  way  of  ap- 
peal, that  the  law  provided  in  cases  of  original  applications. 
§  214.  The  Patent  Act  of  1870 '  substantially  re-enacted 
the  law  of  reissues  as  it  had  been  embodied,  for  more  than 
thirty  years,  in  the  statutes  of  1836  and  1837;  but  re-enacted 
that  law  with  a  few  modifications  and  additions.  Where 
the  old  law  used  the  phrase  "  defective  or  insufficient  de- 
scription or  specification,"  the  new  law  used  the  words  "  de- 
fective or  insufficient  specification."  Where  the  old  statute 
made  it  lawful  for  the  Commissioner  to  reissue  a  patent,  the 
new  statute  made  it  obligatory  upon  him  to  do  so.  Where  the 
old  law  recognized  a  right  in  a  patentee  to  demand  and  re- 
ceive several  reissue  patents  in  the  place  of  one  surrendered 
patent,  the  new  law  provided  that  the  Commissioner  might, 
in  his  discretion,  cause  several  such  patents  to  be  issued 
upon  the  demand  of  the  applicant.  The  provision  of  the 
old  statute,  that  the  applicant,  if  dissatisfied  with  the  deci- 
sion of  the  Commissioner,  should  have  the  same  remedy 
and  be  entitled  to  the  same  privileges  and  proceedings,  as 
were  provided  by  law  in  the  case  of  original  applications 
for  patents,  was  omitted  in  the  new  statute ;  but  its  effect 
was  retained,  by  expressly  mentioning  reissues  in  those 
sections  of  the  new  statute,  which  provided  for  that  remedy, 
and  for  those  privileges  and  proceedings.2  Section  33  of 
the  new  statute  provided  further,  that  where  a  patent  was 
to  be  reissued  to  an  assignee  of  the  inventor,  the  applica- 
tion should  be  made,  and  the  specification  be  sworn  to,  by 
the  inventor,  if  he  be  living.  The  Patent  Act  of  March  3, 
1871 3  prescribed,  that  the  provision  of  Section  33,  just  men- 
tioned should  not  be  construed  to  apply  to  any  patent,  is- 


1  16  Statutes  at  Large,  Ch.  230,  p.       Sections  46  to  52,  p.  204. 
198.  3 16  Statutes  at  Large,  Ch.  132,  p. 

2 16  Statutes  at  Large,  Ch.  230,      583. 


194  REISSUES.  [CHAP.  ix. 

sued  and  assigned  before  July  8,  1870 :  the  date  of  the  ap- 
proval of  the  Act  of  which  that  section  formed  a  part.  An- 
other new  provision  of  the  Statute  of  1870,  was  as  follows  : 
"  No  new  matter  shall  be  introduced  into  the  specification, 
nor  in  case  of  a  machine  patent  shall  the  model  or  drawings 
be  amended,  except  by  each  other ;  but  where  there  is 
neither  model  nor  drawing,  amendments  may  be  made  upon 
proof  satisfactory  to  the  Commissioner  that  such  new  mat: 
ter  or  amendment  was  a  part  of  the  original  invention,  and 
was  omitted  from  the  specification  by  inadvertence,  accident, 
or  mistake,  as  aforesaid."  l 

§  215.  Section  4916  of  the  Revised  Statutes  is  substan- 
tially a  copy  of  Section  53  of  the  Statute  of  1870.  Section 
4895  of  the  Eevised  Statutes,  re-enacted  the  provision  above 
cited  from  Section  33  of  the  Act  of  1870,  coupled  with  the 
statutory  construction  of  that  provision,  which  was  contained 
in  the  Patent  Act  of  1871,  and  which  was  above  explained. 
Sections  46  to  52  of  the  Act  of  1870,  were  re-enacted  as  Sec- 
tions 4909  to  4915  of  the  Revised  Statutes.  Thus  the  law 
of  reissues  underwent  no  change  when  the  Revised  Statutes 
were  approved.  The  reissue  provisions  which  were  em- 
bodied in  the  Act  of  1870,  are  still  the  statutes  which  govern 
the  subject. 

The  meritorious  ground  for  reissues,  as  stated  by  the 
Supreme  Court  in  Grant  v.  Raymond,  has  now  been  set 
forth ;  and  the  subsequently  enacted  and  gradually  devel- 
oped statutory  law  on  the  subject  has  been  explained.  To 
explore  the  great  mass  of  relevant  adjudicated  cases,  and 
to  extract  from  those  cases  the  detailed  doctrines  of  the  law 
of  reissues,  is  the  engaging  work  upon  which  it  is  now  in 
order  to  enter. 

§  216.  To  be  the  lawful  subject  of  a  reissue,  a  patent  must 
be  invalid,  or  it  must  be  at  least  inoperative.2  All  patents 
that  are  invalid,  are  also  inoperative.  If  the  two  words  had, 


1  16  Statutes  at  Large,  Ch.  132,      1836,  Section  13;  Act  of  1870,  Sec- 
Section  53,  p.  206.  tion  53;  Revised  Statutes,  Section 

2  Act  of  1832,  Section  3;  Act  of      4916. 


CHAP.  IX.]  REISSUES.  195 

in  the  statutes,  been  always  connected  with  the  word  "  and," 
there  would  be  ground  for  an  argument  that  they  were  used 
synonymously.  In  fact,  however,  they  have  always  been 
connected  with  the  word  "or,"  thus  indicating  that  they 
were  not  intended  to  signify  the  same  thing.  What  they  do 
respectively  mean  is  to  be  ascertained  by  considering  other 
provisions  of  the  statute ;  namely,  those  provisions  which 
indicate  the  causes  from  which  either  invalidity  or  inopera- 
tiveness  must  have  sprung,  in  order  to  make  patents  reissu- 
able.  To  have  that  effect,  either  of  those  faults  must  have 
resulted  from  a  defective  or  insufficient  specification,  or  from 
the  patentee  claiming  more  than  he  had  a  right  to  claim  as 
new.  This  last  cause  of  fault  was  first  mentioned  in  the 
statute  of  1836.  In  the  following  year  Congress  provided 
that  patents  should  no  longer  be  held  to  be  invalid  on  that 
ground,  provided  proper  disclaimers  were  reasonably  en- 
tered.1 Ever  since  1837,  therefore,  faults  in  patents,  arising 
from  patentees  claiming  more  than  they  had  a  right  to 
claim,  have  generally  been  curable  by  disclaimers. 

§  216#.  But  in  some  cases,  the  matter  in  a  patent  which 
the  patentee  had  no  right  to  claim  as  new,  is  so  blended 
with  the  other  matter  in  the  patent,  that  it  cannot  be  simply 
cut  away  by  a  disclaimer,  and  can  best  be  removed  by  re- 
writing part  or  all  of  the  specification.  In  such  cases  the 
remedy  by  reissue  is  undoubtedly  lawful,  and  can  probably 
be  invoked  regardless  of  any  supposed  intervening  rights 
of  others,  for  others  can  hardly  have  a  right  to  object  to  a 
patentee  reducing  the  area  of  his  patented  claims.  But  the 
remedy  by  disclaimer  in  such  cases  cannot  be  invoked  after 
an  unreasonable  delay  to  invoke  it ;  and  it  is  probable  that 
the  remedy  by  reissue  in  such  cases  is  subject  to  a  similar 
limitation ;  but  such  delay  will  not  be  held  to  begin  till  the 
patentee  is  informed  of  the  facts  which  make  a  narrower 
claim  necessary.2  The  remedy  by  disclaimer,  where  it  can 


1  5  Statutes  at  Large,  Ch.  45,  Sec-      Rep.  834,  1885;  Electrical  Accumu- 
tions  7  and  9,  p.  193.  lator  Co.  v.  New  York  &  Harlem  R. 

2  Matthews  v.  Flower,   25   Fed.      R.  Co.  50  Fed.  Rep.  82,  1892. 


196  BEISSUES.  [CHAP.  IX. 

be  applied,  is  better  than  the  other,  because  the  remedy  by 
reissue  involves  the  loss  of  the  rights  of  action  under  the 
patent  for  infringements  committed  before  the  reissue  is 
granted. 

§  217.  The  meaning  of  the  word  "specification"  is  that 
of  the  words  "description  and  claim"  when  it  is  used,  in 
the  statutes,  separately  from  both  those  words.1  In  the 
reissue  section  of  the  statute  of  1836,  the  word  "  descrip- 
tion" was  used  in  connection  with  the  word  "specification," 
and  thus  limited  the  meaning  of  the  latter  to  the  significa- 
tion of  the  word  "  claim."2  On  the  other  hand,  in  the  fourth 
sentence  of  Section  4916  of  the  Revised  Statutes  the  word 
"specification"  is  used  in  immediate  connection  with  the 
word  "claim,"  and  is  therefore  limited,  in  that  place,  to  the 
meaning  of  the  word  "description." 

The  word  "defective"  and  the  word  " insufficient "  are 
not  synonymous  in  this  statute,  as  at  first  thought  they  may 
appear  to  be.  The  former  word  means  "bad,"  and  the 
latter  means  "lacking."  A  description  may  be  complete, 
while  it  is  obscure  in  some  of  its  parts.  In  such  a  case,  it 
is  defective.  On  the  other  hand,  it  may  be  perfectly  clear, 
as  far  as  it  goes,  while  omitting  all  reference  to  some  parts 
of  the  thing  described.  In  such  a  case  it  is  insufficient. 
So  also,  a  claim  may  mistily  cover  the  whole  invention  de- 
scribed, but  being  liable  to  be  misunderstood,  it  is  defective. 
On  the  other  hand,  it  may  be  entirely  clear,  while  it  is  nar- 
rower than  the  invention,  and  therefore  insufficient  to  cover 
and  secure  the  latter. 

§  218.  From  the  foregoing  it  follows,  that  ever  since  1836 
those  patents  have  been  reissuable  which  were  invalid  or 
inoperative  by  reason  of  defective  or  insufficient  descrip- 
tions or  claims ;  provided  their  faults  arose  from  inadvert- 
ence, accident  or  mistake,  and  without  any  fraudulent  or 
deceptive  intention.  This  proviso  is  equally  imperative  in 


1  Wilson  v.  Coon,  18  Blatch.  535,          a  Wilson  «.  Coon,  18  Blatch.  536, 
1880.  1880. 


CHAP.  IX.]  REISSUES.  197 

all  cases.1  Assuming  it  to  be  satisfied  in  all,  and  passing 
the  provisions  relevant  to  reissues  when  the  patentee  has 
claimed  too  much,  it  appears  that  the  remaining  faults 
which  make  patents  reissuable  are  four  in  number.  1.  In- 
validity arising  from  defective  description.  2.  Invalidity 
arising  from  insufficient  description.  3.  Invalidity  arising 
from  defective  claims.  4.  Inoperativeness  arising  from 
insufficient  claims. 

§  218«.  Invalidity  arising  from  defective  description,  or 
from  insufficient  description,  or  from  defective  claims,  where 
that  invalidity  arose  by  inadvertence,  accident  or  mistake, 
and  without  any  fraudulent  or  deceptive  intention,  may 
undoubtedly  be  remedied  by  a  reissue,  where  the  reissue 
does  not  add  nor  broaden  any  claim.  No  reissue  of  this 
class  has  ever  been  held  to  be  void,  as  a  reissue,  in  any 
adjudicated  case.  Such  reissues  are  indeed  particularly 
consistent  with  the  policy  of  the  patent  law,  because  they 
improve  the  information  of  an  invention,  which  the  public 
can  derive  from  a  patent,  and  thus  increase  the  benefit 
which  the  public  will  enjoy  on  account  of  the  patent  after 
it  shall  have  expired.  There  appears  to  be  no  reason  why 
the  remedy  of  reissue  may  not  be  invoked,  in  a  case  of  this 
class,  at  any  time  during  the  life  of  a  patent,  and  no  reason 
why  any  other  than  the  patentee  can  have  any  intervening 
right  accrue  after  the  date  of  the  original,  and  before  the 
date  of  the  reissue,  which  can  render  the  reissue  invalid.2 

§  219.  Claims  are  the  only  operative  parts  of  specifica- 
tions. If  an  inventor  has  produced  two  or  more  inventions 
so  allied  that  they  may  properly  be  secured  to  him  in  one 
letters  patent,  and  if  he  fully  describes  all  of  those  inven- 
tions in  the  descriptive  part  of  his  specification,  bui  covers 
only  one  of  them  by  his  claims,  then  his  patent  is  operative 
as  to  one  of  those  inventions,  and  inoperative  as  to  the 
others.  Inoperativeness  of  that  kind  is  sufficient  to  lay  the 


1  Coon  v.  Wilson,  113  U.  S.  277,          2  Sewing  Machine  Co.  ®.  Frame, 
1884;  Parker  &  Whipple  Co.  v.  Yale      24  Fed.  Rep.  596,  1884. 
Clock  Co.  123  U.  S.  103,  1887. 


198  REISSUES.  [CHAP.  IX. 

foundation  of  a  right  to  a  reissue.1  And  where  an  inventor 
claims  his  invention  only  in  combination  with  something 
else,  his  patent  is  inoperative  as  to  that  invention  alone.2 
Beissues  granted  in  these  classes  of  cases  are  called  broad- 
ened reissues.  Though  the  statute  does  not,  under  that 
name,  authorize  reissues  of  that  kind,  they  are  authorized 
by  the  general  terms  of  the  law;3  and  have  been  upheld 
by  the  Supreme  Court  in  many  cases;4  and  have  been 
expressly  approved  by  that  tribunal.5 

§  220.  Inadvertence,  accident  or  mistake,  must  have  been 
the  source  of  the  fault  in  letters  patent,  in  order  to  make 
them  reissuable.6  Such  inadvertence  or  accident  may  have 
been  suffered,  or  such  mistake  may  have  been  committed, 
by  the  patentee  or  by  the  Commissioner  of  Patents.7  The 
statute  is  satisfied  on  this  point,  where  the  patent  was 
inoperative  by  reason  of  insufficient  claims,  if  those  claims 
were  made  too  few  or  too  narrow  because  the  patentee  was 
mistaken  about  the  state  of  the  art,8  or  because  the  patentee 
or  his  solicitor,  when  concerting  the  claims,  inadvertently 
failed  to  make  them  as  extensive  as  the  invention.9  So 
also,  the  statute  is  satisfied,  where  the  patent  was  inoper- 
ative by  reason  of  insufficient  claims,  if  those  claims  were 
made  too  narrow  because  the  Commissioner,  on  account  of 
an  erroneous  opinion  entertained  by  him,  refused  to  allow 
them  to  be  made  as  broad  as  they  ought  to  have  been,10  or 


1  Thompson  ®.  Wooster,  114  U.  Planter    Patent,   23  Wallace    217, 
S.  115,  1884;  Anilin  v.  Higgin,  15  1874;  Marsh  v,  Seymour,  97  U.  S. 
Blatch.  291,  1878;   Wilson  «.  Coon,  356,  1877. 

18  Blatch.  535, 1880;  Giant  Powder  5  Topliff  v.  Topliff,  145  U.  S.  170, 

Co.  v.  Nitro  Powder  Co.  19  Fed.  1892. 

Rep.  510,  1884.  «  Revised  Statutes,  Section  4916. 

2  Jenkins  v.  Stetson,  32  Fed.  Rep.  7  Grant  v.  Raymond,  6  Peters,218, 
400,  1887.  1832. 

3  Miller  v.  Brass  Co.  104  U.  S.  8  National  Spring  Co.  v.  Mfg.  Co. 
354, 1881.  12  Blatch.  89,  1874, 

4Battinw.Taggert,  17  Howard,  74,  9  Miller  «.   Brass  Co.  104  U.S. 

1854;  Morey  v.  Lockwood,  8  Wai-  352,  1881. 

lace,  230, 1868;  Rubber  Co.  v.  Good-  10  Morey  v.  Lockwood,  8  Wallace, 

year,   9  Wallace,  788,  1869;  Corn-  230,  1868. 


CHAP.  IX.]  REISSUES.  199 

because  of  an  erroneous  decision  made  by  him  in  an  inter- 
ference proceeding.1  But  the  statute  is  not  satisfied  where 
the  applicant  or  his  attorney  cancels  a  rejected  claim  and 
afterward  seeks  to  reclaim  it  by  a  reissue  ;2  even  where  the 
rejected  claim  was  cancelled  from  a  prior  application  of  the 
same  inventor,  and  not  from  the  particular  application  for 
the  original  of  the  reissue.3  Nor  is  the  statute  satisfied  in 
any  case  where  the  new  claims  of  the  reissue  were  inten- 
tionally omitted  from  the  original  patent.4 

§  221.  The  Supreme  Court  has  recognized  the  fact  that 
patents  have  been  reissued  by  the  Commissioner  of  Patents 
in  some  cases  where  there  was  no  statutory  ground  therefor ; 
that  is  to  say,  in  some  cases  where  the  patents  surrendered 
were  neither  invalid  nor  inoperative  ;  or  if  invalid  or  inop- 
erative, were  not  so  by  reason  of  a  defective  or  insufficient 
specification ;  or  if  invalid  or  inoperative  by  reason  of  a 
defective  or  insufficient  specification,  were  not  so  because 
of  inadvertence,  accident,  or  mistake.  It  is,  however,  still 
an  unsettled  question,  whether  the  decision  of  the  Commis- 
sioner, that  the  existence  of  the  statutory  ground  for  a 
reissue  exists  when  he  grants  a  reissue,  is  conclusive ;  or  is  a 
subject  of  review  and  possible  reversal  in  a  suit  for  infringe- 
ment of  a  reissue.  This  question  arose  in  the  great  case  of 
O'Heilly  v.  Morse,5  where  the  defendant  contended  that 
Morse's  reissue  patent  was  void,  because  his  surrendered  pat- 
ent was  neither  inoperative  nor  invalid.  The  Supreme  Court 
decided  that  the  reissue  patent  was  not  void,  but  the  court 
did  not  explain  whether  it  agreed  in  opinion  with  the  Com- 
missioner touching  the  invalidity  or  inoperativeness  of  the 
surrendered  patent,  or  found  itself  without  power  to  review 
his  decision  on  that  point.  It  was  a  misfortune  that  the 
court  did  not  decide  the  question  of  the  power  of  courts  in 


1  American  Shoe-tip  Co.  «.  Pro-  Bank,  135  U.  S.  379,  1890. 

tector  Co.  2  Bann.  &  Ard.  551, 1877.  4  Dobson  v.  Lees,  137  U.  S.  265, 

2  Union  Paper  Bag  Mach.  Co.  «.  1890. 

Waterbury,  39  Fed.  Rep.  392, 1889.  5  O'Reilly  v.  Morse,  15  How.  62, 

3  Yale  Lock    Co.    v.    Berkshire  1853. 


200  REISSUES.  [CHAP.  ix. 

such  cases ;  for  such  a  decision  would  have  established  the 
law  upon  the  subject,  from  and  after  about  the  middle  of  the 
nineteenth  century,  and  would  have  obviated  the  numerous 
controversies  which  have  ranged  through  the  courts  upon 
the  point  since  that  time,  and  the  numerous  contradictory 
and  inharmonious  obiter  dicta  which  the  Supreme  Court 
and  many  of  the  Circuit  Courts  have  since  promulgated 
about  the  matter,  without  plainly  and  authoritatively  decid- 
ing the  question. 

In  former  editions  of  this  book,  the  then  existing  deliver- 
ances of  the  courts  upon  this  subject,  were  marshaled  and 
explained  on  the  sides  of  the  question  which  they  respect- 
ively support ;  because  in  the  years  of  those  editions,  the 
question  was  one  of  much  practical  importance.  But  the 
decision  of  the  Supreme  Court  in  Miller  v.  Brass  Co.,  which 
was  made  early  in  1882,  on  another  part  of  the  law  of 
reissues,  operated  so  strongly  to  discourage  patentees  from 
surrendering  their  original  patents  and  applying  for  reis- 
sues thereof,  that  only  fifteen  hundred  reissues  have  been 
granted  during  the  thirteen  years  and  a  half  which  have 
passed  since  then  ;  though  nearly  three  hundred  thousand 
original  patents  have  been  issued  during  that  time.  And 
the  comparatively  few  reissues  which  have  not  now 
expired,  were  granted  with  more  circumspection  than  was 
formerly  exercised  in  the  Patent  Office,  in  such  cases ;  so 
that  the  question  whether  the  courts  have  any  authority  to 
review  the  decision  of  the  Commissioner  of  Patents,  that 
some  statutory  ground  exists  therefor,  when  he  grants  a 
reissue,  is  a  question  of  much  diminished  import.  If  any 
lawyers  have  occasion  to  argue,  or  any  judges  have  oc- 
casion to  decide  that  question  hereafter,  they  can  consult 
the  principal  cases  which  support  the  negative,1  and  the 

1  Philadelphia  and  Trenton  Rail-  1892;  Smith    ».    Merriam,   6    Fed. 

road  Co.  v.Stimpson,  14  Peters.  448,  Rep.    713,    1881;    Selden     «.     Gas 

1840;     Stimpson  ®.  Railroad  Co.  4  Burner  Co.  9  Fed.  Rep.  390,  1881; 

Howard,  404,  1846;  Seymour  v.  Os-  Peoria  Target    Co.    v.    Cleveland 

borne,  11  Wallace,  516, 1870;  Collar  Target  Co.  58  Fed.  Rep.  239,  1893; 

Co.  «.  Van  Dusen,  23  Wallace,  558,  Beach  v.   American  Box  Machine 

1874;  Ball  v.  Langles,  102  U.  S.  129,  Co.  63  Fed.  Rep.  603,  1894. 
1880;  Topliff  v.  Topliff,  145  U.S.  171, 


CHAP.  IX.]  REISSUES.  201 

principal    cases    which    support    the    affirmative    of    the 
issue.1 

§  226.  Miller  v.  Brass  Co.,8  is  a  celebrated  case,  which  in- 
troduced a  new  doctrine  into  the  patent  laws  of  the  United 
States.  That  doctrine  is  precisely  this.  The  right  to  obtain 
a  broadened  reissue,  is  lost  by  a  lapse  of  some  time,  after 
the  date  of  the  original,  and  before  the  application  for 
that  reissue.  If  that  doctrine  has  any  prototype  in  any 
prior  deliverance  of  any  United  States  judge,  that  prototype 
must  be  found  in  a  charge  which  Chief  Justice  TANEY 
delivered  to  a  jury  somewhat  early  in  his  judicial  career.3 
In  that  case,  the  third  paragraph  of  his  Honor's  instruction 
was  as  follows  :  "  The  plaintiff,  at  the  time  of  his  applica- 
tion for  the  patent  of  1834,  had  a  right  to  surrender  the 
patent  of  1829,  and  take  out  a  corrected  one,  if  the  said 
patent  was  invalid,  either  by  reason  of  the  defective  de- 
scription of  the  improvement,  or  by  reason  of  his  having 
claimed  as  new,  more  than  he  was  entitled  to ;  provided, 
the  error  had  arisen  from  inadvertence  or  mistake,  and  the 
plaintiff  proceeded  to  correct  it  within  a  reasonable  time 
after  it  was  discovered."  The  last  proviso  of  this  instruc- 
tion, differs  from  the  doctrine  of  Miller  v.  Brass  Co.,  in  that 
the  latter  makes  the  fatal  lapse  of  time  to  begin  at  the  date 
of  the  original  patent,  whereas  the  former  makes  it  begin 
when  the  fault  of  the  original  patent  is  discovered.  This 
difference  is  a  substantial  one  ;  because  reissuable  faults  in 


1  Burr  v.  Duryee,  1  Wallace,  571,  «.    King,    158    U.    S.    371,     1895; 

1863;  Rubber  Co.  v.    Goodyear,  9  Whitely  fl.'/Swayne,  4  Fisher,  123, 

Wallace,  795, 1869;  James  v.  Camp-  1865;  Wicks  v.  Stevens,  2  Bann.  & 

bell,  104  U.  S.  371, 1881;  Mahn  v.  Ard.  318,  1876;  Odell  «.  Stout,  22 

Harwood,  112  U.  S.  359,  1884;  Coon  Fed.  Rep.  161,  1885,  Peoria  Target 

«.  Wilson,  113  U.  S.  277,  1884;  Yale  Co.  v.  Cleveland  Target  Co.  47  Fed. 

Lock  Co.  «.  Berkshire  Bank,  135  Rep.    737,    1891;    Featherstone   ®. 

U.  S.  378-,  1890;  Dobson  t>.  Lees,  Cycle  Co.  57  Fed.  Rep.  635,  1893. 

137  U.  S.  265,  1890;  Electric  Gas  2  Miller  v.  Brass  Co.   104  U.  S. 

Co.  v.  Boston  Electric  Co.  139  U.  S.  350,  1881. 

502,   1891;    Huber  v.  Nelson  Mfg.  s  Knight  v.  Railroad  Co.,  Taney's 

Co.   148  U.   8.   290,   1893;  Olin  9.  Circuit  Court  Decisions,  107,  1840. 
Timken,  155  U.  S.  148,  1894;  Eby 


202  REISSUES.  [CHAP.  EX. 

letters  patent  are  often,  and  perhaps  generally,  of  such  a 
character  that  they  can  be  detected  only  by  persons  learned 
in  the  patent  law ;  and  because  a  patentee  may  honestly 
keep  his  patent  by  him  for  years,  without  subjecting  it  to 
professional  scrutiny.  The  doctrine  of  Miller  v.  Brass  Co. 
must  therefore  find  its  foundation  and  genesis  elsewhere 
than  in  the  opinion  of  Chief  Justice  TANEY  ;  and  elsewhere 
than  in  any  United  States  decision  made  and  reported  before 
that  doctrine  was  promulgated  in  that  case  in  January,  1882. 

But  that  doctrine  has  been  emphatically  reaffirmed  by  the 
Supreme  Court  in  the  use  of  the  following  language.  "  We 
deem  it  proper  to  say,  once  for  all,  that  the  views  announced 
in  Miller  v.  Brass  Co.,  on  the  subject  of  reissuing  patents 
for  the  purpose  of  extending  and  enlarging  the  claim,  were 
deliberately  expressed  and  are  still  adhered  to." l 

The  Supreme  Court  has  also  decided  and  announced 
that  the  rule  in  Miller  v.  Brass  Co.  is  not  qualified  by  any 
question  relevant  to  the  presence  or  absence  of  intervening 
rights  of  other  inventors,  accruing  between  the  date  of  the 
original  patent,  and  the  date  of  the  application  for  a  reissue 
thereof  ; 2  and  that  Court  has  also  held  that  the  operation 
of  the  rule  is  not  ousted  by  the  fact  that  the  invention 
sought  to  be  covered  by  a  broadened  reissue,  had,  during 
the  preceding  life  of  the  original  patent,  been  apparently, 
though  erroneously,  secured  to  the  same  patentee,  in  another 
patent.3 

§  227.  The  length  to  which  delay  must  be  drawn  out,  in 
order  to  lose  the  right  to  apply  for  a  broadened  reissue, 
cannot  be  fixed  and  laid  down  for  all  cases.  Where  the 
specification  is  complicated,  and  the  claim  is  ambiguous  or 
involved,  the  patentee  may  be  entitled  to  greater  indulgence 
than  he  would  be  if  the  'case  were  simpler  or  clearer  ;  and 
the  courts  will  always  exercise  a  proper  liberality  on  this 
point  in  favor  of  patentees.4  In  Miller  v.  Brass  Co.  itself, 

1  Mahn  v.  Harwood,    112    U.    S.  3  Hartshorn  a.  Barrel  Co.  119  U. 
358,  1884.  S.  674,  1886. 

2  White  v.  Dunbar,  119  U.  S.  52,  4  Mahn  v.   Harwood,  112    U.  S. 
1886.  361,  1884. 


CHAP.  IX.]  EEISSUES.  203 

the  delay  continued  for  fifteen  years.  In  three  later  Supreme 
Court  cases,  the  delay  was  for  fifteen,  fourteen  and  thirteen 
years,  respectively.1  In  still  later  Supreme  Court  cases 
much  shorter  delays  have  been  held  to  be  fatal  to  broadened 
reissues  ; a  and  indeed,  in  one  simple  case  where  adverse 
rights  had  intervened,  a  delay  of  ninety-seven  days  was 
decided  to  have  a  fatal  effect  on  such  a  reissue.3  The  gen- 
eral rule  is  that  a  delay  for  two  years  or  more  invalidates 
a  broadened  reissue,  unless  that  delay  is  accounted  for  and 
excused  by  special  circumstances.4  What  special  circum- 
stances will  have  that  effect,  cannot  now  be  stated,  because 
none  such  have  yet  been  found  by  the  Supreme  Court 
to  have  that  operation,  and  because  one  case  in  which  a 
Circuit  Court  sustained  so  late  a  broadened  reissue,5  on 
account  of  such  circumstances,  was  disapproved  in  the 
Supreme  Court.6  In  a  later  case  a  delay  of  nearly  three  years 
was  excused  ;•  because  the  inventor  was  in  poor  health,  and 
at  times  mentally  deranged,  and  once  wholly  insane,  during 
the  delay.7  But  the  reception  of  erroneous  advice  from  a 
solicitor  of  patents,  not  to  apply  for  a  particular  reissue, 
is  no  excuse  for  waiting  a  long  time,  and  then  doing  so.8  A 
delay  of  less  than  two  years  is  enough  to  defeat  a  broadened 
reissue  in  a  plain  case,  even  in  the  absence  of  intervening 
rights  ; 9  and  in  such  a  case,  six  months  is  probably  as  long 
a  delay  as  can  be  excused.10 

1  Johnson  v.  Railroad  Co.  105  U.          «  Hartshorn  v.  Barrel  Co.  119  U. 
S.  539,  1881;  Mathews  t>.  Machine      S.  674,  1886. 

Co.  105  U.  S.  54,  1881;    Bantz  v.  7  Whitcomb  v.  Coal  Co.  47  Fed. 

Frantz,  105  U.  S.  160,  1881.  Rep.  658,  1891. 

2  Leggett  t>.  Standard  Oil  Co.  149  »  Wollensak  v.    Sargent,  151  U. 
U.  8.  292,  1893;  Dunham  v.  Denni-  S.  227,  1894. 

son  Mfg.  Co.  154  U.  S.  110.  1894.  »  Farmer's  Mfg.  Co.  e.  Corn-Plant- 

3  Coon  ».  Wilson,  113  U.  S.  277,  er  Co.  128  U.  S.  506,  1888;  New  «. 
1884.  Warren,  22  Off.   Gaz.    588,    1882; 

4  Wollensak  v.  Reiher,  115  U.  8.  Hayies  v.  Peck,  26  Fed.  Rep.  625, 
101. 1884;  Hoskin  «  Fisher,  125  U.  1884;    Union  Paper  Bag   Machine 
8.  222.  1887;  Topliff  «.  Topliff,  145  Co.  «.   Waterbury,    39  Fed.  Rep. 
U.  8. 171,  1892.  391,  1891.     • 

6  Hartshorn  v.  Roller  Co.  18  Fed.          w  McArthur  v.  Supply  Co.  19  Fed. 
Rep.  92,  1883.  Rep.  263,  1884. 


204  REISSUES.  [CHAP.  ix. 

§  229.  The  statutory  provision  which  makes  a  patent  void, 
if  the  invention  it  covers  was  in  public  use  or  on  sale  more 
than  two  years  before  that  patent  was  applied  for,  is  a  mat- 
ter which  does  not  apply  to  reissue  patents,  and  the  appli- 
cations therefor.1  The  reissue  application  is  considered  as 
appended  to  the  original  application,8  and  the  two  years 
cease  to  run  with  the  filing  of  the  latter. 

§  230.  A  surrender  of  a  patent,  when  made  with  an  ap- 
plication for  a  reissue,  need  not  be  made  in  writing  ;  and 
therefore  the  statement  in  a  reissue  that  it  is  a  reissue  of  a 
surrendered  former  reissue,  is  not  negatived  by  the  produc- 
tion of  a  document  purporting  to  be  a  surrender  of  the 
original  patent,  and  apparently  intended  to  have  been  a 
surrender  of  the  former  reissue.3  The  presumption  that 
the  proper  patent  was  surrendered,  by  parol  if  not  other- 
wise, is  not  negatived  by  proof  of  an  ineffectual  attempt  to 
surrender  it  in  writing. 

§  231.  Patents  surrendered  prior  to  July  8,  1870,  were 
thereby  cancelled  in  law,  whether  a  reissue  was  granted 
thereon  or  not.4  Patents  surrendered  since  July  8,  1870, 
were  also  cancelled  thereby  if  reissues  were  granted  there- 
on, but  not  otherwise.5  But  a  surrendered  patent  cannot 
be  enforced  while  the  application  for  a  reissue  is  pending.6 
No  damages  or  profits  can  ordinarily  be  recovered,  for  any 
infringement  of  a  surrendered  patent  committed  prior  to  its 
cancellation,  by  means  of  any  judgment  or  decree  entered 
after  that  time  ;  but  money  recovered  or  voluntarily  paid, 
on  account  of  such  infringement,  prior  to  such  cancellation, 
cannot  be  recovered  back.7  Nor  will  any  such  cancellation 


1  Shaw  v.  Lead  Co.  11  Fed.  Rep.  5  16  Statutes  at  Large,  Ch.  132, 
714, 1882.  Section  53,  p.  206;  Revised  Statutes, 

2  Grant  ®.  Raymond,  6  Peters,  Section  4916. 

218,  1832.  6  Burrell  v,  Hackley,  35  Fed.  Rep. 

3  Dental  Vulcanite  Co.  v.  Wether-  833,  1888. 

bee,  2  Cliff,  563,  1866.  7  Moffitt  v.  Garr,   1  Black.  273, 

4  Moffitt  0.  Garr,   1  Black.   273,  1861 ;    Eby  v.  King,  158  U.  S.  373, 
1861;  Peck  «.  Collins,  103  U.  S.  664,  1895. 

1880. 


CHAP.  IX.]  BEISSUES.  205 

have  any  effect  upon  any  unpaid  judgment  or  decree  which 
was  entered  before  that  cancellation  took  effect.  The  right 
of  the  patentee,  in  such  a  case,  rests  upon  his  judgment 
or  decree,  and  not  on  his  patent.1 

The  only  exception  yet  established,  to  what  the  last  para- 
graph states  is  the  ordinary  rule  relevant  to  profits  and 
damages  which  accrued  from  the  infringement  of  a  surren- 
dered patent  before  its  cancellation,  was  established  in  a 
case  where  the  defendant  infringer  was  himself  the  patentee, 
and  where  the  plaintiffs  were  his  equitable  grantees,  as  to 
that  part  of  the  territory  of  the  United  States,  included 
within  the  boundaries  of  Connecticut  and  New  York.  In 
that  case,  the  patentee  infringed  his  grantees'  rights,  and 
afterward  surrendered  and  reissued  the  patents  involved. 
The  Supreme  Court  decided  that  the  defendant  held  his 
patents,  all  the  time  in  trust  for  the  plaintiffs,  to  the  extent 
of  their  territory ;  and  that  he  must  therefore  account  to 
them  for  the  profits  which  he  had  made  from  the  use  of 
the  trust  property,  within  that  territory,  regardless  of  the 
fact  that  he  had  surrendered  and  reissued  those  patents, 
after  making  a  part  of  those  profits.2 

§  232.  A  reissue  patent  may  be  surrendered  and  again 
reissued,  under  the  same  circumstances  as  those  which 
make  an  original  patent  reissuable,3  and  the  last  reissue 
may  be  identical  with  the  original  patent.4  So  also,  a 
patent  might  be  reissued  during  its  extended  term,  as  well 
as  during  its  first  term,  when,  as  formerly,  extensions  of 
patents  were  provided  for  by  law.5  But  patents  reissued 
during  their  respective  extended  terms  will  be  more  likely 


1  Mevs  v.  Conover,  125  U.  S.  144,  Powder  Co.  19  Fed.  Rep.  510,  1884. 
1876.  Celluloid  Mfg.  Co.  v.  Zylonite  Co. 

2  Littlefleld  v.  Perry,  21  Wallace,  27  Fed.    Rep.   291,   1886;    Sawyer. 
205, 1874.  Spindle  Co.  v.  Eureka  Spindle  Co. 

8  French  v.  Rogers,  1  Fisher,  136,  83  Fed.  Rep.  836,  1888. 

1851;  Selden  v>.  Gas  Burner  Co.  9  5  Wilson  v,  Rousseau,  4  Howard, 

Rep.  Fed.  390,  1881.  646, 1846;  Gibson  v.  Harris,  1  Blatch. 

4   Giant   Powder    Co.    «.    Nitro  167, 1846. 


206  REISSUES.  [CHAP.  ix. 

to  suffer  from  the  doctrine  of  Miller  v.  Brass  Co.1  than  those 
reissued  during  their  first  terms,  because  of  the  generally 
longer  lapse  of  time  after  the  dates  of  the  originals.  No 
reissue  can  be  granted  of  a  patent  after  its  final  expiration  ; 
even  where  that  expiration  resulted  from  the  fact  that  the 
same  invention  had  been  patented  in  a  foreign  country 
before  it  was  patented  in  the  United  States  ;  and  from  the 
fact  that  the  foreign  patent  has  expired,  though  the  United 
States  patent  sought  to  be  reissued,  does  not  appear,  on  its 
face,  to  have  done  so.2 

§  233.  Only  "  the  same  invention  "  can  be  covered  by  a 
reissued  patent.3  This  quoted  phrase  occurs,  in  this  rela- 
tion, in  all  the  relevant  statutory  provisions,  now  or  hereto- 
fore in  force  in  the  United  States.  But  neither  of  those 
statutes  obviously  indicate  whether  the  phrase  refers  to 
whatever  invention  was  made  by  the  patentee,  and  actually 
described  in  his  original  application  ;  or  refers  to  whatever 
invention  was  substantially  suggested,  indicated  or  de- 
scribed in  the  patentee's  original  letters  patent,  drawing  or 
model ;  or  refers  to  whatever  invention  was  described  or 
indicated  in  the  original  letters  patent  or  drawing  of  the 
patentee  ;  or  refers  to  whatever  invention  was  described  by 
him  in  his  original  letters  patent ;  or  refers  to  whatever  in- 
vention was  described  in  the  original  letters  patent,  and 
appears  therein  to  have  been  intended  to  be  secured  thereby; 
or  refers  to  whatever  invention  was  actually  claimed  by  the 
inventor  in  his  original  patent.  During  many  years,  debate 
ranged  in  the  courts  around  these  various  constructions  ; 
and  large  masses  of  obiter  dicta  and  many  actual  adjudica- 
tions can  be  collected  out  of  the  books,  in  favor  of  each  of 
them.  But  the  Supreme  Court  put  a  period  to  the  contro- 
versy in  the  case  of  the  Parker  &  Whipple  Co.  v.  the  Yale 
Clock  Co.  decided  in  1887.4  That  decision  adopted  the 

1  Miller  «.   Brass  Co.  104  U.   S.  Patent  Act  of    1836,    Section    13; 

350,  1881.  Patent   Act  of    1870,   Section    53; 

2C.  W.   Siemens' Appeal,  11  Off.  Revised  Statutes,  Section  4916. 

Gaz.  1107,  1877.  4  Parker  &  Whipple  Co.  v.  Yale 

3  Patent  Act  of  1832,  Section  3;  Clock  Co.  123  U.  S.  99,  1887. 


CHAP.  IX.]  REISSUES.  207 

fifth  of  the  above  stated  constructions,  and  thus  established 
the  meaning  of  the  phrase  "  the  same  invention  "  to  be 
whatever  invention  was  described  in  the  original  letters 
patent,  and  appears  therein  to  have  been  intended  to  be 
secured  thereby.  This  rule  has  already  been  repeatedly 
reaffirmed  and  reapplied  by  the  Supreme  Court,1  and  is  now 
as  well  established  as  its  companion  rule  in  Miller  v.  Brass 
Co.  Therefore  no  reissue  claim  can  stand  any  longer  upon 
a  model  alone,  nor  even  alone  upon  a  drawing  of  an  original 
patent ; 2  and  indeed  neither  models,  drawings  nor  descrip- 
tions, nor  all  of  them  together,  can  support  a  reissue  claim, 
except  where  the  description  in  the  original  letters  patent 
shows  that  the  invention  covered  by  that  claim  was  intended 
to  be  secured  in  the  original.3 

§  239.  The  last  clause  of  Section  4916,  of  the  Revised 
Statutes  provides,  that  "  where  there  is  neither  model  nor 
drawing,  amendments  may  be  made  upon  proof  satisfactory 
to  the  Commissioner  that  such  new  matter  or  amendment 
was  a  part  of  the  original  invention,  and  was  omitted  from 
the  'specification  by  inadvertence,  accident  or  mistake." 
The  meaning  of  that  clause  is  not  perfectly  known  ;  but  it  is 
known  not  to  enlarge  the  power  of  the  Commissioner,  in 
reference  to  the  invention  for  which  a  reissue  may  be 
granted.4 

§  240.  The  provision,  first  enacted  in  1870,5  that  "no  new 
matter  shall  be  introduced  into  the  specification  "  is  merely 
another  way  of  saying  that  a  reissued  patent  shall  be  for 
the  same  invention  as  the  original.6  That  provision,  there- 
fore, neither  enlarged  nor  restricted  the  reissuability  of 


1  Hoskins  t>.  Fisher,   125  U.  S.  587,  1887. 

223,  1887;  Flower  v.  Detroit,  127  U.  3  Carpenter  Machine  Co.®.  Searle, 

8.  571,    1887;  Pattee  Plow  Co.   v.  52  Fed.  Rep.  814,  1892. 

Kingman  &  Co.  129  U.  S.  294, 1889;  <  Powder  Co.  v    Powder  Works, 

Freeman    v.    Asmus,    145    U.    S.  98  U.  S.  128,  1878. 

240,  1895;  Corbin  Cabinet  Lock  Co.  «  16  Statutes  at  Large,  Ch.  230, 

0.  Eagle  Lock  Co.   150  U.   S.  42,  Section  53,  p.  206. 

1893.  «  Powder  Co.  «.   Powder  Works, 

2  Hailes  v.  Stove  Co.  133  U.  S.  98  U.  S.  138,  1878. 


208  BEISSUES.  [CHAP.  ix. 

letters  patent;  and,  accordingly,  it  is  not  new  matter, 
within  its  meaning,  to  state  a  new  use  of  the  invention 
shown  in  the  original ; l  nor  to  explain,  in  a  reissue,  the 
operation  of  a  device  which  in  the  original  was  only 
described ; 2  nor  to  vary  the  description  of  anything 
described  in  the  original.3 

§  242.  Eeissued  patents,  which  were  granted  on  the  sur- 
render of  former  reissues,  must  be  able  to  endure  compari- 
son, on  the  point  of  identity  of  invention,  not  only  with  the 
original  letters  patent,  but  also  with  the  surrendered  reissues, 
which  preceded  them.4 

§  243.  There  is  a  legal  presumption  that  the  necessary 
identity  of  invention  exists  in  all  reissued  patents  ;  and  that 
presumption  controls  the  point,  unless  the  contrary  is 
shown  to  be  true.5  That  can  be  done  only  by  introducing 
the  original  letters  patent  in  evidence.6 

§  244.  To  omit  from  a  reissue,  anything  which  the  orig- 
inal specification  stated  to  be  essential  to  the  invention,  is 
fatal  to  identity  of  invention.7  Indeed,  it  has  been  held  in 
one  case  that  the  omission  of  one  bolt  from  a  reissue  patent 
for  a  reaper  and  mower,  was  enough  to  negative  identity 
with  the  original,  because,  with  the  bolt,  the  machine  was  a 
reaper  only,  and  not  a  mower.8  A  process  is  not  the  same 
invention  as  a  machine  which  may  perform  that  process;9 
and  a  process  consisting  of  one  stage  is  not  the  same  as  a 
process  consisting  of  that  stage  and  one  or  more  others.10 
Where,  however,  an  original  patent  described  and  claimed 


1  Broadnax  v.  Transit  Co.  5  Bann.  6  Seymour  v.  Osborne,  11  Wal- 
&  Ard.  611,  1880.  lace,  516,  1870. 

2  Putnam  «.  Yerrington,  2  Bann.  7  Gill  «.   Wells,   22  Wallace,  1, 
&  Ard.  243,  1876;   Potter  «.  Stew-  1874;    Russell  c.  Dodge,   93  U.  8. 
art,  18  Blatch.  561,  1881.  460,  1876;  Atwood  ®.  Portland  Co. 

3  O'Reilly  v.  Morse,  15  Howard,  10  Fed.  Rep.  286,  1880. 

62, 1853.  8  Kirby  v.  Mfg.   Co.   10  Blatch. 

4  Knight  «.  Railroad  Co.,  Taney's  307, 1872. 

Circuit  Court  Decisions,  106,  1840.  9  Eachus  v.  Broomall,  115  U.  S. 

5  O'Reilly  «.  Morse,  15  Howard,  436,  1885. 

62,1853;  Klein  v.  Russell,  19  Wai-  10  Wood-Paper  Patent,  23  Wallace, 

lace,  433,  1873.  599,  1874. 


CHAP.  IX.]  REISSUES.  209 

several  different  inventions,  one  or  more  of  those  inven- 
tions may  be  omitted  from  the  claims  of  a  reissue  of  that 
patent.1  It  is  necessary  to  the  requisite  identity  of  inven- 
tion, that  the  reissue  should  claim  no  invention  not  de- 
scribed and  intended  to  be  claimed  in  the  original ;  but  it 
is  not  necessary  to  that  identity,  that  the  original  should 
describe  or  claim  no  invention  not  described  or  claimed  in 
the  reissue. 

§  245.  A  sub-combination  may  be  claimed  in  a  reissue,  if 
it  was  shown  in  the  original  as  performing  the  same  func- 
tion ;  even  though  it  was  claimed  in  the  original  only  as  a 
part  of  a  larger  combination.2  But  a  sub-combination  can- 
not be  legally  claimed  in  a  reissue,  if  it  is  there  shown  to 
perform  a  substantially  different  function  from  any  which 
it  could  perform  in  its  original  environment.3  In  the  former 
case  the  invention,  consisting  of  the  sub-combination, 
existed  in  the  original  specification.  In  the  latter  case,  the 
sub-combination  may  have  existed  in  the  original,  but  it  did 
not  compose,  in  that  place  the  same  invention  which  it  con- 
stitutes in  the  reissue. 

§  246.  A  single  device  may  also  be  made  the  subject  of 
a  separate  claim  in  a  reissue,  though  in  the  original  it  was 
claimed  only  in  combination  with  other  devices  ;  provided 
that  device  was  a  new  and  useful  invention  of  the  patentee, 
and  might  have  been  separately  claimed  by  him  in  the 
original  patent,  and  appears  therein  to  have  been  intended 
to  be  secured  thereby.4 


1  Rubber  Co.  v.  Goodyear,  9  Wai-  Bann.  &  Ard.  461,  1878;  Odell  v. 
lace,  788,  1869.  Stout,  22  Fed.  Rep.  163,  1884;  Jen- 

2  Battin  v.  Taggert,  17  Howard,  kins  v.  Stetson,  32  Fed.  Rep.  398, 
74,   1854;  Corn-Planter  Patent,  23  1887. 

Wallace,  181,  1874;  Jordan  v.  Dob-  3  Qm  „.  Wells,  22  Wallace,  24, 
son,  4  Fisher  232,  1870;  Pearl  v.  1874;  Johnson  v.  Railroad  Co.  105 
Ocean  Mills,  2  Bann.  &  Ard.  469  U.  8.  539.  1881. 
1877;  Herring  v.  Nelson,  3  Bann.  &  4  Parker  &  Whipple  Co.  v.  Yale 
Ard.  55,  1877 ;  Kerosene  Lamp  Clock  Co.  123  U.  S.  87,  1887;  Gal- 
Heater  Co.  v.  Littell,  3  Bann.  &  lahue  «.  Butterfield,  10  Blatch.  237, 
Ard.  312,  1878;  Turrell  v.  Spaeth,  3  1872. 


210  REISSUES.  [CHAP.  ix. 

§  247.  Whether  a  patentee,  in  effecting  a  reissue,  may 
describe  an  equivalent  of  one  of  the  elements  of  the  origi- 
nally patented  combination,  and  may  claim  the  combination 
broadly  enough  to  cover  that  equivalent,  is  a  question  which 
depends  upon  the  effect,  in  particular  cases,  of  the  appli- 
cation of  the  rule  in  Miller  v.  Brass  Co.  Where  such  a 
reissue  is  applied  for  promptly  after  the  granting  of  the 
original  patent,  it  may  be  sustained  ;x  but  the  right  to  obtain 
such  a  reissue,  is  lost  by  long  lapse  of  time  after  the  date  of 
the  original,  and  before  the  application  for  that  reissue.2 

§  248.  Reissue  patents  are  not  to  be  held  void  for  want 
of  identity  with  the  originals,  where  a  liberal  construction 
of  the  two  documents  can  avert  that  result.3  Courts  are 
accordingly  inclined,  where  claims  apparently  illegal  are 
inserted  in  reissue  patents,  to  modify  those  claims  by  con- 
struction, in  order  to  make  them  conform  to  propriety.4 
This  inclination  is  not,  however,  to  be -relied  upon,  in  a  case 
where  a  patent  was  surrendered  and  reissued  solely  to 
broaden  its  claim,  and  where  the  broadened  claim  is  void 
for  want  of  novelty,  as  well  as  for  want  of  identity  with  the 
original  invention.5 

§  249.  Where  some,  but  not  all,  of  the  claims  of  a  re- 
issue patent  are  void  because  they  are  obnoxious  to  the 
doctrine  of  Miller  v.  Brass  Co.,  or  because  they  are  not  for 
the  same  invention  as  the  original ;  that  fact  does  not  vitiate 
the  other  claims  of  that  patent.  The  reissue  will,  in  either 
of  those  cases,  have  whatever  validity  it  would  have  had  if 
it  had  not  contained  the  invalid  claims,  provided  there  is  no 
unreasonable  delay  to  file  a  proper  disclaimer  of  them.6 

i  McArthur  v.  Supply  Co.  19  Fed.  6  Gage  «.  Herring,  107  U.  S.  640, 

Rep.  263,  1884.  1882;  Gould  «.  Spicer,  15  Fed.  Rep. 

a  White  v.  Dunbar,  119  U.  S,  51,  344,  1882;  Cote  «.  Mofflt,  15  Fed. 

1886,  Rep.  345, 1882;  Schillinger  v.  Brew- 

3  Milligan  &  Higgins  Glue  Co.  «.  ing  Co.  24  Off.  Gaz.  495,  1883;  Na- 
Upton,  1  Bann.  &  Ard.  505,  1874.  tional  Pump  Cylinder  Co.  v.  Gunni- 

4  Mfg.  Co.  D.  Ladd,  102  U.  8.  412,  son,  17  Fed.  Rep.  812, 1883;  Have- 
1880;  Brainard  v.  Gramme,  12  Fed.  meyer  v.  Randall,  21  Fed.  Rep.  405, 
Rep.  624,  1882.  1884;  International  Terra  Cotta  Co. 

6  Wisner  v.  Grant,  7  Fed.  Rep.      v.  Maurer,  44  Fed.  Rep.  622,  1890. 
922,  1880. 


CHAP.  IX.J  BEISSUES.  211 

§  250.  Executors,  administrators  or  assigns  have  the  same 
right  to  surrender  and  reissue  a  patent,  that  the  patentee 
himself  has  ; l  except  that  in  the  case  of  assigns  of  patents 
which  were  assigned  by  the  patentee  after  July  8,  1870,  the 
application  must  be  made,  and  the  new  specification  be 
signed,  by  the  inventor  himself  if  living,2  and  sane.3  The 
exemption  from  this  law,  of  all  patents  granted  and  assigned 
before  July  8,  1870,  is  not  to  be  found  in  the  Patent  Act  of 
that  date.  It  was  first  enacted  March  3,  1871 ; 4  but  it 
expressly  applied,  by  retroactive  operation,  to  all  reissues 
of  the  kind,  that  were  granted  between  July  8,  1870,  and 
March  3,  1871.  Of  course,  it  applies  by  prospective 
operation,  to  all  reissues  of  the  kind  granted  since  the 
latter  date.  In  cases  where  the  patent  was  granted  and 
assigned  by  the  patentee,  before  July  8,  1870,  the  inventor 
needed  to  take  no  part  in  the  application  for  a  reissue,  even 
though  the  applicant  received  his  assignment  from  an  inter- 
mediate owner  after  that  day.5  It  however  always  was, 
and  still  is,  proper  for  the  patentee  to  make  the  application 
for  a  reissue,  instead  of  his  assignee  doing  so ;  provided  it 
be  done  with  the  knowledge  and  consent  of  the  latter,  or 
provided  the  latter  ratifies  the  application,  after  it  is  made.6 
The  title  to  the  reissued  patent  will,  in  such  a  case,  vest  at 
once  in  the.  assignee,  by  operation  of  the  assignment  of  the 
original  patent,  and  without  the  execution  of  any  new 
document.7 

§  251.  Where  several  executors  are  appointed  in  a  will, 
but  only  one  of  them  receives  letters  testamentary,  a  pat- 
ent of  the  testator  may  be  lawfully  reissued  to  that  executor, 
and  the  legal  title  to  the  reissued  patent  will  thereupon 


1  Revised  Statutes,  Section  4916.  6  Dental  Vulcanite  Co.  t>.  Wether- 

2  Revised  Statutes,  Section  4895.  bee,  2  Cliff.  563, 1866;  Wing  v.  War- 

3  Whitcomb  v.  Coal  Co.  47  Fed.  ren,  5  Fisher,  548,  1872. 

Rep,  659,  1891.  1  Woodworth  v.   Hall,  1   Wood- 

4  16  Statutes  at  Large,  Ch.  132,  p.  bury  &  Minot,  248,  389,  1846;  Mc- 
583.  Burney  v.   Goodyear,    11    Cushing 

6  Selden  v.  Gas  Burner  Co.  9  Fed.  (Mass.)  569, 1853. 
Rep.  390,  1881. 


212  REISSUES.  [CHAP.  IX. 

vest  exclusively  in  him.1  A  grant  of  a  reissue  to  a  person 
as  administrator,  is  conclusive  evidence  in  an  infringement 
suit  that  the  person  was  in  fact  administrator ;  2  and  the 
same  rule  doubtless  applies  as  well  to  executors.  A  reissue 
to  a  person  in  trust  for  the  heirs  at  law  of  the  patentee,  will 
confer  the  legal  title  to  the  reissue  upon  that  person,  and 
the  equitable  title  upon  the  persons  beneficially  interested, 
whoever  they  may  be.3 

§  252.  An  assignee  of  a  patent  is  a  person  to  whom  the 
entire  legal  interest,  or  an  undivided  part  of  the  entire  legal 
interest,  in  a  patent  has  been  duly  assigned  by  an  instru- 
ment in  writing.  A  grantee  differs  from  an  assignee  in  that 
the  rights  conveyed  to  him  are  confined  to  a  part  or  to 
parts  of  the  territory  of  the  United  States.  A  licensee  is 
one  who  receives  either  an  exclusive  or  a  concurrent  right 
to  make  or  to  use  or  to  sell  the  thing  covered  by  the  patent.4 
A  reissue  may  be  granted  to  an  assignee  of  the  executor  or 
administrator  of  the  patentee ; 5  or  to  an  assignee  of  an 
assignee;6  or  indeed  to  an  assignee  of  any  degree,  however 
far  removed  from  the  original  patentee  by  mesne  assign- 
ments;~  and  if  the  reissued  patent  recites  those  assignments, 
it  becomes  at  least  prima  facie  evidence  thereof,  in  an 
infringement  suit.8  If  a  patent  is  owned  jointly  by  two  or 
more  patentees,  or  by  two  or  more  assignees,  or  by  one  or 
more  patentees  and  one  or  more  assignees,  all  the  owners 
must  join  in  a  reissue,  or  must  ratify  it,  or  it  will  be  void; 
but  neither  grantees  nor  licensees  are  required  to  do  either.9 

1  Rubber  Co.  «.  Goodyear,  9  Wai-  5  Carew  v.  Fabric  Co.  1  Holmes, 
lace,  788.  1869.  45, 1871. 

2  Woodworth  v.  Hall,  1  Wood-  B  Swift  v.  Whisen,  2  Bond,  115, 
bury  &  Minot,  248,  389,  1846;  Good-  1867. 

year  v.  Hullihen,    3   Fisher,    251,  7  Selden  ».  Gas  Burner  Co.  9  Fed. 

1867.  Rep.  390,  1881. 

3  Woodworth  v.  Stone,  3  Story,  8  Middletown  Tool  Co.  •».  Judd, 
752,  1845;  Northwestern  Fire  Ex-  3  Fisher,   141,   1868;      Hoffheins  0. 
tinguisher  Co.  «.  Philadelphia  Fire  Brandt,  3  Fisher,  218,  1867. 
Extinguisher  Co.  1  Bann.  &  Ard.  177,  »  Potter  v.  Holland,  4  Blatch  206, 
1874.  1858;  Forbes  v.  Stove  Co.   2  Cliff. 

4  Sections  274,  287,  and  296  of  this  379, 1864;  Meyer  v.  Bailey,  2  Bann 
book.  &  Ard.  73,  1875. 


CHAP.  IX.]  REISSUES.  213 

The  right  of  a  patentee  or  assignee  to  receive  a  reissue  is 
not  affected  by  his  having  made  grants,  or  issued  licenses 
under  his  patent;1  but  where  a  patentee  grants  away  his 
rights  in  a  part  of  the  territory  of  the  United  States,  and 
afterward  conveys  the  residue  to  another  vendee,  it  is  doubt- 
ful whether  that  vendee  is  entitled  to  apply  for  a  reissue.2 

§  253.  Grantees  may  continue  to  hold  their  rights  under 
an  original  patent  after  it  is  surrendered  and  reissued  by 
the  patentee  or  assignee ;  or  they  may  take  corresponding 
rights  under  the  reissued  patent.  They  have  their  choice 
between  the  two.3  It  follows  from  this  rule,  that  in  theory 
at  least,  a  given  invention  may  be  the  subject  of  letters  pat- 
ent in  one  part  of  the  United  States,  at  the  same  time  that 
it  is  free  to  the  public  in  other  parts  of  the  country.  If  this 
were  a  practical  result,  it  would  be  highly  unjust,  because 
it  would  operate  to  prohibit  given  manufactures  in  one 
State,  while  in  another  State  the  same  pursuits  would  be 
free  to  all.  In  fact  however,  patentees  or  assignees  seldom 
surrender  any  claims  which  it  is  worth  while  for  any  inter- 
ested person  to  retain ;  and,  on  the  other  hand,  grantees  are 
generally  ready  to  ratify  and  adopt  broadened  reissues.  It 
may  hereafter  happen,  that  in  order  to  retain  his  rights  of 
action  for  accrued  damages  or  profits,  or  in  order  to  avoid 
the  risk  of  exchanging  a  valid  original  patent  for  a  reissue 
patent  of  uncertain  validity,  now  and  then  a  grantee  will 
elect  to  continue  to  hold  under  the  original,  while  the  pat- 
entee holds  under  a  reissue  patent.  If  such  cases  become 
numerous  and  important,  they  will  probably  lead  to  a  change 
in  the  statute.  The  remedy  would  be  to  enact  that  in  such 
cases  all  the  assignees  and  grantees  shall  join  in  the  sur- 
render. 

§  254.  The  legal  effect  of  a  valid  reissue  patent  has  always 
been  the  same  under  the  different  statutes  which  have  from 


1  Smith  v.  Mercer,  3  Penn.  L.  J.  8  Washburn  v.  Gould,   3  Story, 
Reports,  529,  1846.  122,  1844;  Woodworth  «.  Stone,  3 

2  Commissioner    of    Patents   v.  Story.  749,  1856;  Potter  v.  Holland, 
Whiteley,  4  Wallace,  522,  1866.  4  Blatch,  206,  1858. 


214  •       REISSUES.  [CHAP.  ix. 

time  to  time  been  in  force.  The  phraseology  of  the  Act  of 
1832  in  this  respect  was  as  follows :  "  Such  new  patent,  so 
granted,  shall,  in  all  respects,  be  liable  to  the  same  matters 
of  objection  and  defence  as  any  original  patent.  But  no 
public  use  or  privilege  of  the  invention  so  patented,  derived 
from  or  after  the  grant  of  the  original  patent,  either  under 
any  special  license  of  the  inventor,  or  without  the  consent 
of  the  patentee  that  there  shall  be  a  free  public  use  thereof, 
shall,  in  any  manner,  prejudice  his  right  of  recovery  for  any 
use  or  violation  of  his  invention  after  the  grant  of  such  new 
patent  as  aforesaid." l  The  language  of  the  Act  of  1836  on 
this  point  was  as  follows :  "  The  patent,  so  reissued,  together 
with  the  corrected  description  and  specification,  shall  have 
the  same  effect  and  operation  in  law,  on  the  trial  of  all 
actions  hereafter  commenced  for  causes  subsequently  accru- 
ing, as  though  the  same  had  been  originally  filed  in  such 
corrected  form."2  The  provision  of  the  Eevised  Statutes 
upon  the  same  subject  is  as  follows:  "Every  patent  so 
re-issued,  together  with  the  corrected  specification,  shall 
have  the  same  effect  and  operation  in  law,  on  the  trial  of 
all  actions  for  causes  thereafter  arising,  as  if  the  same  had 
been  originally  filed  in  such  corrected  form."3 

It  follows  from  these  provisions,  that  a  reissued  patent 
cannot  be  affected,  in  point  of  novelty,  by  anything  done 
after  the  date  of  the  original  application.  Novelty  still 
dates  from  the  original  invention.4  Nor  will  any  invention 
produced  after  that  time  be  taken  into  account  as  showing 
the  state  of  the  art,  and  therefore  as  being  relevant  to  the 
question  of  construction  of  a  reissued  patent.5  On  the 
other  hand,  when  reissued  patents  are  introduced  in  evi- 
dence to  negative  the  novelty  or  limit  the  scope  of  other 


1 4  Statutes  at  Large,  Ch.162,  Sec-  4  Grant  v.  Raymond,  6  Peters,  218, 

tion  3,  p.  559.  1832. 

2  5  Statutes  at  Large,  Ch.357,  Sec-  5  Carroll  «.  Morse,  9  Off.  Gaz.  453, 
tion  13,  p.  122.  1876. 

3  Revised  Statutes  Section  4916. 


CHAP.  IX.]  REISSUES.  215 

patents,  they  operate  as  of  their  own  dates,  and  not  as  of 
the  dates  of  the  originals.1 

It  follows  also  from  the  foregoing  statutory  provisions 
that  persons  who  use  or  sell,  after  the  date  of  a  reissued 
patent,  specimens  of  the  thing  covered  by  it,  are  liable  as 
infringers ;  even  though  those  persons  made  or  bought,  or 
used  those  specimens  before  that  date,  and  when,  on 
account  of  the  omission  to  cover  them  by  the  original  pat- 
ent, they  had  a  legal  right  to  appropriate  the  invention.2 


1  United  States  Stamping  Co.  •».  dan,  7  Wallace,  609,  1868;  Carr  v. 
King,  17  Blatch.  64, 1879.  Rice,  1  Fisher,  211,   1856;  Bliss  «. 

2  Stimpsonfl.  Railroad  Co.  4  How-  Brooklyn,  8  Blatch.  534,  1871. 
ard,  380,  1846;  Agawam  Co.  v.  Jor- 


CHAPTER  X. 


EXTENSIONS. 


255.  Constitutional    foundation   of 
extensions. 

256.  Congressional  extensions. 

257.  Mode  of  Congressional  exten- 
sion. 

258.  Effect  of  Congressional  exten- 
sions. 

259.  Patent  Office  extensions.    • 

260.  Statutory  foundation  of  Patent 
Office  extensions. 

261.  Who  might  apply  for  Patent 
Office  extensions. 

262.  Points  of  time  whereon  Pat- 
ent Office  extensions  were  grant- 
able. 

263.  Patent  Office  extension  might 
be  granted  to  an  inventor-pat- 
entee,  even  if  he  had  parted 
with  all  interest  in  the  first  term 
of  his  patent. 


264.  Patent  Office  extensions  granta- 
ble  only  where  inventors  would 
possess,  or  at  least  participate  in, 
the  benefit  thereof. 

265.  Patent  Office   extension,   how 
effectuated. 

266.  Force  of  the   Commissioner's 
decision  in  extension  cases. 

267.  Facts  which  justify  extensions. 

268.  Proceedings  preliminary  to  ex- 
tensions. 

269.  Remedy  for  fraud  in  procuring 
or  in  granting  extensions. 

270.  ' '  The  benefit  of  the  extension  of 
a  patent  shall  extend  to  the  as- 
signees and  grantees  of  the  right 
to  use  the  thing  patented,  to  the 
extent  of  their  interest  therein. " 

271.  Adjudged  meaning  of  the  stat- 
ute quoted  in  the  last  section. 


§255.  THE  constitutional  provision  relevant  to  the  dura- 
tion of  patent  rights,  is  that  such  rights,  when  granted, 
shall  be  granted  for  limited  times.1  The  Patent  Act  of 
1790 "  provided,  that  under  the  circumstances  and  condi- 
tions prescribed  therein,  the  Secretary  of  State,  and  the  Sec- 
retary of  War,  and  the  Attorney  General,  or  any  two  of  them, 
might  issue  letters  patent  for  an  invention,  for  any  term 
not  exceeding  fourteen  years.  The  same  provision  was 
made  in  the  Patent  Act  of  1793.3  Under  that  law,  patents 


1  Constitution  of  the  United  States, 
Article  I.  Section  8. 
*  1  Statutes  at  Large,  Ch.  7,  Sec- 


tion 1,  p.  109. 

3 1  Statutes  at  Large,  Ch  11,  Sec- 
tion 1,  p.  321. 

216 


CHAP.    X.]  EXTENSIONS.  217 

were  generally,  if  not  universally,  granted  for  the  full  four- 
teen years  ;  but  whether  so  granted  or  not,  there  was,  prior 
to  1832,  no  mention  in  the  statutes  of  any  way  in  which  any 
patent,  once  granted,  could  be  extended,  and  its  duration 
thus  prolonged.  In  July  of  the  last- mentioned  year,  it  was 
enacted :  "  That  application  to  Congress  to  prolong  or  re- 
new the  term  of  a  patent,  shall  be  made  before  its  expira- 
tion." :  The  same  section  also  provided  a  method  of  pro- 
ceeding, to  be  followed  by  applicants  in  such  cases.  The 
entire  section  was,  however,  merely  a  self-imposed  limita- 
tion on  a  constitutional  power  of  Congress :  the  power  to 
promote  the  progress  of  science  and  useful  arts,  by  secur- 
ing for  limited  times,  to  inventors  the  exclusive  right  to 
their  respective  inventions.  Inasmuch  as  Congress  could 
disregard  that  limitation  in  any  particular  case,2  the  section 
was  not  one  of  great  importance,  even  while  it  remained  on 
the  statute  book ;  and  it  was  repealed  by  the  Patent  Act  of 
July  4,  1836. 3  Since  that  date,  the  extending  of  patents  by 
Congress,  has  been  regulated  by  no  other  law  than  the  Con- 
stitution. 

§  256.  Patents  may  be  extended  by  Congress  at  any  time, 
either  before  or  after  their  expiration.4  This  power  was 
exercised  as  early  as  1808. 6  In  one  later  case  such  an  ex- 
tension was  granted  nearly  three  years  before  the  then 
existing  exclusive  right  was  to  expire ;"  and  in  another, 
more  than  twenty-one  years  intervened  between  the  expira- 
tion'of  the  original  term  of  the  patent,  and  the  granting  of 
the  extension.7  Congressional  extensions,  when  granted, 
are  usually  granted  for  the  term  of  seven  years ;  but  they 
may  lawfully  be  granted  for  any  limited  length  of  time, 
whether  longer  or  shorter  than  that. 

1  4  Statutes  at  Large,  Ch.  162,  Sec-  bott,  407,  1870  ;    The    Fire  Extin- 
tion  2,  p.  559.  guisher  Case,  21  Fed.  Rep.  42,  1884. 

2  The  Fire  Extinguisher  Case,  21  s  Evans  v.  Jordan,  9  Cranch,  199, 
Fed.  Rep.  42,  1884.  1815. 

3  5  Statutes  at  Large,  Ch.  357,  Sec-  6  Bloomer  v.  McQuewan,  14  How- 
tion  21,  p.  125.  ard.  539,  1852. 

4  Bloomer  v.  Stolley,  5  McLean,  7  Agawam  Co.  «.  Jordan,  7  Wal- 
161,  1850 ;  Jordan  v.  Dobson,  2  Ab-  lace,  583,  1868. 


218  EXTENSIONS.  [CHAP.   X. 

§  257.  Some  special  acts,  for  the  extension  of  patents, 
merely  extend  their  duration  by  a  simple  legislative  edict, 
and  do  no  more.1  Others  instruct  the  Commissioner  of 
Patents  to  ascertain  the  truth  relevant  to  sundry  questions 
of  fact  mentioned  therein ;  and  authorize  him  to  decide 
whether  in  view  of  those  facts,  and  of  sundry  considera- 
tions of  justice  and  of  public  policy,  the  patent  ought  to  be 
extended ;  and  direct  him  to  extend  it,  if  his  decision  is  in 
the  affirmative.8  When  patents  are  extended  in  this  latter 
method,  those  provisions  of  the  special  act  which  limit  the 
operation  of  the  extension,  need  not  be  recited  in  the  cer- 
tificate of  extension,  which  the  Commissioner  indorses  upon 
the  patent  or  otherwise  puts  forth.  The  law  reads  the  cer- 
tificate in  the  light  of  that  statute,  without  any  such  recital.3 

§  258.  Special  Acts  of  Congress  granting  or  authorizing 
extensions  of  patents,  come  within  the  general  rule,  that 
the  validity  of  a  statute  cannot  be  questioned  in  courts,  on 
any  allegation  that  its  passage  was  procured  by  fraud  or 
bribery.4  Such  Acts  are  considered  as  engrafted  on  the 
general  patent  laws,  and  are  to  be  construed  in  connection 
with  them.5  Although  the  Constitution  authorizes  Congress 
to  grant  exclusive  rights  in  inventions  only  to  inventors, 
Congress  may  provide,  when  exercising  its  power  in  par- 
ticular cases,  that  assignees  of  the  inventors  shall  have  the 
same  rights  under  the  extended  term,  that  they  had  under 
the  original  term  of  the  patent  extended.6 

§  259.  Patent  Office  extensions  of  patents,  were  first  au- 
thorized by  the  Patent  Act  of  July  4, 1836.7  By  the  Patent 
Act  of  March  3, 1861,  they  were  prohibited,  as  to  all  patents 


1  Bloomer  v.  McQuewan,  14  How-  1850. 

ard,  539,  1852  ;  Woodworth  v.  Ed-  5  Bloomer  v.  McQuewan,  14  How- 
wards,  3  Woodbury  and  Minot,  123,  ard,  539,  1852;  Jordan  v.  Dobson,  2 
1847.  Abbott,  408,  1870. 

2  Agawam  Co.  v.  Jordan,  7  Wai-  6  Blanchard's  Gun-Stock  Turning 
lace,  583,  1868.  Factory  v.  Warner,  1  Blatch.  259, 

3  Agawam  Co.  v.  Jordan,  7  Wai-  1848. 

lace,  583,  1868.  7  5  Statutes'  at  Large,   Ch.   357, 

4  Gibson  v.  Gifford,  1  Blatch.  529,  Section  18,  p.  124. 


CHAP.   X.]  EXTENSIONS.  219 

thereafter  granted.1  The  last  extension  of  the  kind,  was 
granted  in  1875,  and  expired  in  1882.  It  is  improbable 
that  any  general  law,  authorizing  such  extensions,  will  ever 
again  be  enacted  in  the  United  States.  Inasmuch,  however, 
as  actions  are  still  liable  to  be  brought  for  past  infringe- 
ments of  some  of  those  formerly  in  force,  and  also  because 
part  of  the  rules  and  doctrines  of  law  established  in  suits 
for  infringements  of  Patent  Office  extensions,  are  equally 
applicable  to  suits  based  on  Congressional  extensions,  it  is 
expedient  to  explain  those  rules  and  doctrines  in  this  book. 
§  260.  The  Patent  Act  of  1836  provided,2  that  whenever 
any  patentee  of  an  invention  should  desire  an  exten- 
sion of  his  patent,  he  might  make  application  therefor  in 
writing,  to  the  Commissioner  of  the  Patent  Office,  setting 
forth  the  grounds  thereof ;  and  that  the  Commissioner 
should  thereupon,  and  on  the  payment  of  a  specified  fee, 
cause  to  be  published  a  notice  of  the  application,  and  of 
the  time  and  place  when  and  where  the  same  would  be  con- 
sidered. The  Secretary  of  State,  the  Commissioner  of  the 
Patent  Office,  and  the  Solicitor  of  the  Treasury,  were  con- 
stituted a  board  to  hear  and  decide  upon  the  evidence  pro- 
duced before  them  both  for  and  against  the  extension.  If, 
upon  such  hearing  in  any  particular  case,  it  appeared  to  the 
board,  having  a  due  regard  to  the  public  interest,  that  it  was 
just  and  proper  that  the  term  of  the  patent  should  be  ex- 
tended by  reason  of  the  patentee,  without  neglect  or  fault 
on  his  part,  having  failed  to  obtain  from  the  use  and  sale 
of  his  invention,  a  reasonable  remuneration  for  the  time, 
ingenuity  and  expense  bestowed  upon  the  same,  and  upon 
its  introduction  into  public  use ;  the  statute  made  it  the 
duty  of  the  Commissioner  to  extend  the  patent,  by  making 
a  certificate  thereon  of  such  extension,  for  the  term  of  seven 
years  from  and  after  the  expiration  of  the  first  term.  The 
statute  also  provided  that  no  such  extension  should  be 
granted  after  the  expiration  of  the  term  for  which  it  was 


1  12  Statutes  at  Large,   Ch.   88,          s  5  Statutes  at  Large,  Ch.  .357,  Sec- 
Section   16,  p.  249.  tion  18,  p.  124. 


220  EXTENSIONS.  [CHAP.    X. 

originally  issued  ;  and  that  when  so  extended,  a  patent 
should  have  the  same  effect  in  law  as  though  it  had  been 
originally  granted  for  the  term  of  twenty-one  years ;  and 
that  the  benefit  of  such  renewal  should  extend  to  assignees 
and  grantees  of  the  right  to  use  the  thing  patented,  to  the 
extent  of  their  respective  interests  therein. 

The  Patent  Act  of  1848  '  amended  the  above  provisions 
by  vesting  the  power  of  the  board,  in  the  Commissioner  of 
Patents  alone ;  and  by  directing  him  to  take  into  consider- 
ation the  original  patentability  and  novelty  of  the  inventions 
covered  by  patents  sought  to  be  extended,  as  well  as  to  be 
governed  by  the  rules  and  principles  that  had  theretofore 
governed  the  board. 

No  other  change  was  ever  made  in  the  statute  relevant  to 
the  subject,  until  in  1861  it  was  repealed  as  to  future 
patents.  As  to  patents  granted  before  March  2,  1861,  it 
was  re-enacted  in  the  Patent  Act  of  1870, 2  and  again  re- 
enacted  in  the  Revised  Statutes.3  In  both  these  re-enact- 
ments, one  provision  is  found,  which  did  not  exist  in  the 
former  law,  namely  the  provision  that  the  application 
should  be  filed  not  more  than  six  months  nor  less  than 
ninety  days  before  the  expiration  of  the  original  term  of 
the  patent. 

§  261.  The  statutes  relevant  to  extensions  have  all  men- 
tioned "  patentees"  as  being  persons  entitled  to  apply  for 
extensions,  and  have  mentioned  no  others.  When  the  first 
of  those  statutes  was  enacted  in  1836,.  nobody  but  an  in- 
ventor or  his  executor  or  administrator,  could  be  a  patentee. 
In  1837,  however,  Congress  enacted,  that  any  patent  there- 
after issued,  might  be  made  and  issued  to  the  assignee  or 
assignees  of  the  inventor.4  In  all  subsequent  cases,  where 
that  course  was  pursued,  the  inventors  and  the  patentees 
were  not  the  same  persons  ;  but  no  corresponding  change 
was  ever  made  in  the  statute  relevant  to  extensions.  The 

1  9  Statutes  at  Large,  Ch.  47,  Sec-  3  Revised  Statutes,  Sections  4924 

tion  1,  p.  231.  to  4928. 

5 16  Statutes  at  Large,  Ch.  230  ;  4  5  Statutes  at  Large,  Ch.  45,  Sec- 
Sections  63  to  67,  p.  208.  tion  6,  p.  193. 


CHAP.    X.]  EXTENSIONS.  221 

question  has  therefore  arisen,  whether,  in  such  cases,  it  was 
the  inventor  who  had  a  right  to  apply  for  an  extension,  or 
whether  the  patentee  was  the  person  who  had  that  right,  or 
whether  both  the  inventor  and  the  patentee  must  have 
joined  in  such  an  application.  Where  the  inventor  would 
have  an  equitable  interest  in  the  extension  if  granted,  it  was 
proper  for  him  to  apply  for  that  extension  alone.1  When 
granted,  the  legal  title  to  such  an  extension  would  vest  in 
the  patentee,  because  such  an  extension  was  in  the  nature 
of  an  amendment  of  his  patent ;  but  the  equitable  title 
might  vest  wholly  in  the  inventor,  or  vest  partly  in  the  in- 
ventor and  partly  in  the  patentee,  or  vest  partly  in  the  in- 
ventor and  partly  in  third  persons,  according  to  the  equi- 
table facts  of  each  case.  When  the  inventor  would  have  no 
equitable  interest  in  the  extension  if  granted,  no  extension 
could  be  obtained,  either  on  his  application,  or  on  that  of 
the  patentee,  or  on  that  of  both  together  ;  because  it  was 
not  the  intention  or  scope  of  the  statute  to  grant  extensions 
of  patents  for  the  sole  benefit  of  others  than  the  inventors 
of  the  things  secured  thereby.2 

Whether  the  executor  or  administrator  of  an  inventor- 
patentee,  had  a  right  to  apply  for  an  extension,  was  the  first 
of  the  ten  questions  which  were  submitted  to  the  Supreme 
Court  in  the  celebrated  case  of  Wilson  v.  Rousseau.  That 
question  was  argued  in  the  affirmative  by  Webster,  Seward 
and  Latrobe,  and  decided  in  the  affirmative  by  the  court.3 

Where  a  joint  patent  was  taken  out  by  joint  inventors,  all 
had  to  join  in  an  application  for  an  extension  of  that  pat- 
tent,  if  all  were  living ;  and  if  any  were  dead,  the  legal 
representatives  of  the  deceased  had  to  unite  in  such  an 
application.4 

§  262.  No  Patent  Office  extension  was  ever  grantable  after 
the  expiration  of  the  original  term.6  Such  extensions  could 

1  Sayles  v.  Dubuque  and   Sioux          3  Wilson  v.  Rousseau,  4  Howard, 
City  Railroad  Co.  3  Bann.  &  Ard.      673.  1846. 

220,  1878.  4  Wickersharn's  Case,  4  Off.  Gaz. 

2  Wilson  v.  Turner,  Taney's  Cir-      155,  1873. 

cuit  Court  Decisions,  292,  1845.  6  Act  of  1836,  Section  18;  Act  of 


222  EXTENSIONS.  [CHAP.   X. 

be  granted  at  any  time  before  the  midnight  at  the  end  of  the 
last  day  of  that  term ;  because  fourteen-year  patents  did 
not  expire  till  the  last  hour  of  the  fourteenth  anniversary 
of  the  day  of  their  respective  dates.1  Patents  limited  in 
law  to  the  term  of  fourteen  years  from  the  date  of  earlier 
foreign  patents,  were  extendible,  at  the  discretion  of  the 
Commissioner  of  Patents,  as  well  as  those  not  so  limited ; a 
but  in  such  a  case  the  extension  had  to  be  granted  before 
the  expiration  of  the  foreign  patent,  even  though  the  ex- 
tended patent  purported  on  its  face  to  run  for  some  time 
longer.3 

§  263.  Whether  an  inventor-patentee  needed  to  possess 
any  interest  in  the  first  term  of  his  patent  at  the  time  of 
applying  for  an  extension  thereof,  was  the  fifth  question 
submitted  to  the  Supreme  Court  in  the  case  of  Wilson  v. 
Rousseau.4  That  question  was  decided  in  the  negative. 
Even  where  the  assignee  of  the  first  term  of  a  patent  surren- 
dered and  reissued  it,  the  inventor-patentee  had  a  right  to 
ignore  the  reissue,  and  to  apply  for  and  receive  an  exten- 
sion of  the  original  patent.6 

§  264.  It  was  against  the  policy  of  the  law,  if  not  against 
its  letter,  to  extend  any  patent,  in  the  extension  of  which,  if 
granted,  the  inventor  would  have  no  property  right.  The 
right  to  an  extension  was  given  by  the  law,  chiefly  with  a 
view  to  the  advantage  of  the  inventor,  and  not  of  his  assignee 
or  grantee.8  It  never  was  necessary,  however,  that  the  in- 
ventor should  be  in  a  condition  to  receive  the  legal  title  to 
the  extension,  or  even  that  the  entire  equitable  estate  in  it, 
should  belong  to  him.  An  interest  in  the  proceeds  of  the 
exclusive  right  during  the  extended  term,  was  enough  to 


1870,  Section  63;  Revised  Statutes,  4  Wilson  v.  Rousseau,  4  Howard, 

Section  4934.  673,  1846. 

1  Johnson®.  McCullough, 4 Fisher,  5  Potter  «.  Braunsdorf,  7  Blatch. 
170,  1870.  97, 1869;  Crompton  «.  Belknap  Mills, 

2  Tilghman  v.  Mitchell,  9  Blatch.  3  Fisher,  536,  1869. 

27,  1871.  6  Wilson  v.  Turner,  Taney's  Cir- 

3  New  American  File  Co.  v.  Nichol-  cuit  Court  Decisions,  292,  1845. 
son  File  Co.  8  Fed.  Rep.  816, 1881. 


CHAP.    X.]  EXTENSIONS.  223 

satisfy  the  policy  of  the  law  in  this  respect.1  Even  where 
the  original  patent  was  granted  to  an  assignee,  and  where 
the  extension  was,  therefore,  in  point  of  legal  title,  a  pro- 
longation of  his  patent,  the  extension  was  held  to  be  valid, 
because  the  inventors  had  interests  in  its  proceeds.2  More- 
over, inventors  are  presumed  in  law  to  have  had  a  sufficient 
interest  to  support  extensions  actually  granted,  unless  the 
contrary  is  proved  to  have  been  the  fact.3 

§  265.  The  certificate  of  extension  which  was  provided 
for  by  the  statute,4  was  generally  indorsed  on  the  original 
parchment  letters  patent ;  but  where  the  original  document 
was  lost  or  was  out  of  the '  control  of  the  person  applying 
for  the  extension,  that  certificate  was  indorsed  upon  a  certi- 
fied copy  of  the  letters  patent  and  was  equally  valid.6 

§  266.  Jurisdiction  to  extend  a  particular  patent,  was  ac- 
quired by  the  Commissioner,  under  the  statutes  in  force 
prior  to  July  8,  1870,  whenever  the  proper  person  filed  an 
application  for  such  an  extension,  and  paid  the  requisite- 
fee  ; "  provided  the  application  was  filed,  and  the  fee  paid, 
long  enough  before  the  expiration  of  the  original  term  of 
the  patent,  to  enable  the  Commissioner  to  investigate  the 
matter  in  the  way  prescribed  by  statute.7  After  July  8, 1870, 
the  law  remained  the  same  on  this  point,  except  that  under 
the  statute  of  that  date,  and  under  the  Revised  Statutes, 
the  application  had  to  be  filed  not  more  than  six  months, 
nor  less  than  ninety  days  before  the  first  term  of  the  patent 
would  expire.8  The  jurisdiction  always  depended,  there- 
fore, upon  the  application  being  filed  and  the  fee  paid  by 
the  proper  person  at  the  proper  time.  The  decision  of  the 


1  Gear  v.   Grosvenor,   1   Holmes,  108,  1869. 

215,  1873.  6  Gear  v.   Grosvenor,  1  Holmes, 

2  Sayles  t>.  Dubuque  and   Sioux  218,  1873. 

City  Railroad  Co.  3  Bann.  &  Ard.  7  Agawam  Co.  •».  Jordan,  7  Wal- 

220,  1878.  lace,  583,  1868. 

3  Ruggles  v.  Eddy,  10  Blatch.  56,  8 16  Statutes  at  Large,  Ch.  230, 
1872.  Section  63,  p.  208;  Revised  Statutes, 

4  Patent  Act  of  1836,  Section  18.  Section  4924. 
4  Potter  v.  Braunsdorf,  7  Blatch. 


224  EXTENSIONS.  [CHAP.    X. 

Commissioner,  relevant  to  the  existence  of  his  jurisdiction, 
was  never  conclusive  in  any  case.1  The  validity  of  a  Patent 
Office  extension,  is  therefore  open  to  inquiry  in  an  infringe- 
ment suit,  when  it  is  questioned  on  the  theory  that  the 
person  who  applied  for  it,  was  not  such  a  person  as  had 
the  legal  right  to  do  so.  In  deciding  that  question,  how- 
ever, the  courts  regard  with  respect  the  practical  construc- 
tion of  the  statute,  which  was  necessarily  involved  in  the 
granting  of  the  extension.2  Indeed  the  Supreme  Court  has 
held  that  the  practical  construction  given  to  a  statute,  by 
the  executive  branch  of  the  government  charged  with  its 
execution,  is  entitled  to  great  weight,  when  the  true  mean- 
ing of  that  statute  is  drawn  into  judicial  inquiry.3 

§  267.  The  meritorious  facts  which  entitled  an  inventor- 
patentee  to  a  Patent  Office  extension  were  that,  without  fault 
or  neglect  on  his  part,  he  had  failed  to  obtain  from  the  use 
and  sale  of  his  invention,  a  reasonable  remuneration  for  the 
'time,  ingenuity,  and  expense  bestowed  upon  it,  and  upon  its 
introduction  into  public  use.4  Unlike  the  foundation  facts 
which  entitle  a  patentee  to  a  reissue,  these  points  are  not 
required  by  the  statute  to  exist  absolutely.  The  statutory 
provision  is  that  they  shall  appear  to  the  satisfaction  of  the 
Commissioner  of  Patents.  It  is  therefore  immaterial  whether 
the  courts  are  satisfied  of  their  existence  or  not.  The  fact 
that  a  particular  extension  was  granted,  shows  that  the  Com- 
missioner was  satisfied  of  the  existence  of  those  facts  in  that 
case  ;  and  evidence  that  they  did  not  in  fact  exist,  is  there- 
fore inadmissible  in  a  suit  for  infringement  of  the  patent 
during  that  extension." 

§  268.  The  statute  made  it  the  duty  of  the  Commissioner 
to  advertise  all  applications  for  extensions,  and  to  refer  such 
cases  to  the  principal  examiner  having  in  charge  the  class  of 


1  Wilson  v.  Rousseau,  4  Howard,  4  Patent  Act  of  1836,  Section  18; 
687,  1846.  Patent  Act    of    1870,    Section  66 ; 

2  Brooks  v.  Bicknell,  3  McLean,  Revised  Statutes,  Section  4927. 
250,  1843.  5  Clum  v.  Brewer,  2  Curtis,  506, 

3  Grants.  Raymond,  6 Peters,  244,  1855;  Jordan  v.  Dobson,  2  Abbott, 
1832.  408,  1870. 


CHAP.   X.]  EXTENSIONS.  225 

inventions  to  which  the  patent  sought  to  be  extended  be- 
longed, and  having  received  the  report  of  the  examiner,  to 
hear  and  decide  each  particular  case  at  the  time  and  place 
designated  in  the  advertisement.  All  these  provisions 
were  directory,  and  none  of  them  were  jurisdictional.  The 
validity  of  no  extension  could  therefore  be  affected  by 
proof,  in  an  infringement  suit,  that  some  or  all  of  those 
acts  were  omitted  by  the  Commissioner,  or  were  irregularly 
performed.1 

§  269.  No  fraud,  practised  upon  or  by  the  Commissioner, 
relevant  to  securing  or  granting  an  extension,  can  ever  be- 
come the  subject  of  inquiry  in  any  suit  for  infringement. 
The  decision  of  the  Commissioner,  in  granting  an  extension, 
does  not,  however,  foreclose  all  inquiry  into  allegations  of 
fraud,  as  it  does  into  allegations  of  inadvertence,  error,  or 
ministerial  irregularity.  The  law  is  not  so  absurd  as  to 
make  a  man's  own  decision  that  he  has  committed  no  fraud, 
and  suffered  none  to  be  committed  upon  him,  a  conclusive 
adjudication  of  that  point.  But  charges  so  grave  deserve  a 
special  proceeding  for  their  investigation.  They  are  not 
to  be  bandied  about  as  collateral  makeweights  in  infringe- 
ment suits.  When  investigated,  they  must  be  investigated 
in  a  special  proceeding  brought  to  repeal  the  grant  of  the 
extension." 

§  270.  "  The  benefit  of  the  extension  of  a  patent  shall 
extend  to  the  assignees  and  grantees  of  the  right  to  use  the 
thing  patented,  to  the  extent  of  their  interest  therein."  3 
This  enactment,  in  almost  precisely  the  same  words,  has 
always  found  a  place  in  statutes  relevant  to  extensions  of 
patents.4  The  meaning  of  this  law  was  never  learned  from 
its  perusal.  It  is  one  of  the  cases  in  which  persons  who 
could  neither  think  nor  write  with  precision  or  with  clear- 
ness, were  put  to  penning  statutes  for  a  nation.  It  is  an 

1  Brooks  v.  Jenkins,  3  McClean,  lace,  796,  1869;  Mowry  v.  Whitney, 

435,  1844;  Colt  v.  Young,  2  Blatch.  14  Wallace,  434,  1871. 
473,  1852;  Tilghman  v.  Mitchell,  9          3  Revised  Statutes,  Section  4928. 
Blatch.  27,  1871.  4  Patent  Act  of  1836,  Section  18: 

3  Rubber  Co.  v.  Goodyear,  9  Wai-  Patent  Act  of  1870,  Section  67. 


226  EXTENSIONS.  [CHAP.    X. 

instance  in  which  Congress  made  a  law  for  millions,  without 
having  any  accurate  idea  of  the  nature  of  the  law  it  was 
making.  The  duty  of  ascribing  a  definite  meaning  to  the 
enactment,  devolved,  therefore,  upon  the  courts.  But  the 
clause  was  so  ambiguous  that  the  judges  could  not  agree  in 
regard  to  it.  A  provision  which  should  have  been  put  be- 
yond question  by  a  competent  and  faithful  Congress,  when 
it  was  enacted  in  1836,  was  still  a  subject  of  controversy  in 
the  Supreme  Court  more  than  thirty-seven  years  later. 
Now  that  more  than  fifty  years  have  passed  since  its  enact- 
ment, the  text  writer  can  collate  the  adjudicated  cases,  and 
can  deduce  and  state  the  adjudicated  meaning  of  the  clause. 
That  meaning  is  as  follows. 

§  271.  Every  person  who,  at  the  beginning  of  any  extended 
term  of  any  patent,  has  a  right  to  use  a  particular  specimen 
of  any  thing  covered  by  that  patent,  has  the  same  right  to 
use  that  specimen  during  that  extended  term,  unless  his 
right  was  expressly  limited  so  as  not  to  include  that  term ; 
and  if  such  a  person  is  the  owner  of  such  a  specimen,  he 
may  sell  it  to  be  used  by  others  during  that  extension.1 

The  limitations  expressed  in  this  rule  are  not  to  be  over- 
looked. 1.  It  applies  only  to  persons  whose  right  to  use 
existed  at  the  time  of  the  extension.  It  has  therefore  been 
the  practice  of  some  patentees  to  avoid  the  rule  altogether, 
by  making  their  licenses  expire  a  day  or  more  before  the 
end  of  the  existing '  terms  of  their  respective  patents.  2. 
The  rule  confers  no  right  upon  any  person  on  account  of  his 
having  had  a  right  to  make  or  sell  specimens  of  the  patented 
thing.  3.  The  rule  does  not  apply  to  any  patent  for  a  pro- 
cess.* 4.  The  rule  confers  no  right  under  an  extension,  that 

1  Wilson  v.  Rousseau,  4  Howard,  Woodworth  ®.  Curtis,  2  Woodbury 

677,  1846;  Bloomer  «.  McQuewan,  and  Minot,  524,  1847;   Goodyear  ». 

14  Howard,  539,  1852  ;  Chaffee  v.  Rubber  Co.  1  Clif.  349, 1859;  Woos- 

Belting  Co.  22  Howard,  217,  1859;  ter  v.  Sidenberg,  13  Blatch.  88, 1875; 

Bloomer  «.   Millinger,   1  "Wallace,  Black  0.  Hubbard,  3  Bann.  &  Ard. 

340,  1863;  Mitchell  v.  Hawley,  16  39,  1877. 

Wallace,    544,     1872  ;    Eunson    v.  2  Wetherill  v.  Zinc  Co.  6  Fisher, 

Dodge,  18 Wallace,  414, 1873;  Paper-  50,  1872. 
Bag    Cases,   105  U.   8.   766,   1881; 


CHAP.   X.] 


EXTENSIONS. 


227 


did  not  exist  under  the  former  term.  Accordingly,  if  the 
former  right  was  subject  to  a  royalty,  the  right  under  the 
extension  will  be  subject  to  the  same  royalty.1  5.  The  rule 
confers  no  right  to  make  or  use  or  sell  any  new  specimen  of 
the  patented  thing ; "  though  it  does  confer  a  right  to  repair 
the  articles  to  which  it  applies.3  6.  The  rule  does  not  apply 
where  the  right  to  use,  when  granted  by  the  patentee,  was 
expressly  limited  to  the  existing  term  of  the  patent.4  The 
right  provided  by  the  rule  of  this  section  is  a  property 
right ;  and  the  specimens  to  which  it  refers,  and  the  right 
to  use  those  specimens,  may  therefore  be  transferred  by 
sale,  devise,  levy  of  execution,  or  assignment  in  insolvency.5 


1  Union  Mfg.  Co.  «.  Lounsbury, 
41  New  York,  363,  1869. 

9  Hodge  v.  Railroad  Co.  6  Blatch. 
165,  1868;  Wood  v.  Railroad  Co.  2 
Bissell,  62,  1868. 

8  Wilson  v.  Simpson,  9  Howard, 
109,  1850;  Aiken  v.  Print  Works,  2 


Clif.  435,  1865;  Farrington  v.  De- 
troit, 4  Fisher,  216,  1870. 

4  Mitchell  v.  Hawley,  16  Wallace, 
544,  1872. 

6  Woodworth  v.  Curtis,  2  Wood- 
bury  and  Minot,  524,  1847. 


CHAPTEK  XI. 


TITLE. 


272.  The  nature  of  titles,  and  the 
methods  of  their  acquisition. 

273.  Title  by  occupancy. 

274.  Title  by  assignment. 

275.  Characteristics,      authentica- 
tion, and  effect  of  assignments. 

276.  Dormant  assignments. 

277.  Assignments  of  rights  of  ac- 
tion for  past  infringements. 

278.  Construction  of  assignments. 

279.  Reformation  of  assignments. 

280.  Assignments  of  extensions. 

281.  Recording  and  notice. 

282.  Warranty  of  title. 

283.  No  implied  warranty  of  valid- 
ity. 


284.  Express  warranties  of  validity. 

285.  Equitable  titles;  how  created. 

286.  Equitable  titles;  how  treated. 

287.  Title  by  grant. 

288.  Extra-territorial    rights    con- 
veyed by  grants. 

288<z. .  Mortgages  of  patents. 

289.  Title  by  creditor's  bill. 

290.  Title  by  bankruptcy. 

291.  Title  by  death. 

292.  Tenancy  in  common.    Joint- 
tenancy. 

294.  Rights  of  tenants  in  common 
as  against  each  other. 

295.  Partition. 


§  272.  TITLES  to  patent  rights  are  capable  of  two  inde- 
pendent classifications.  One  relates  to  the  nature  of  title, 
and  the  other  relates  to  the  methods  by  which  title  may  be 
acquired.  In  the  first  of  these  aspects,  titles  are  divisible 
into  those  which  are  purely  legal,  those  which  are  purely 
equitable,  and  those  which  are  both  legal  and  equitable. 
In  the  second  aspect,  they  are  divisible  into  those:  1.  By 
occupancy.  2.  By  assignment.  3.  By  grant.  4.  By  cred- 
itor's bill.  5.  By  bankruptcy.  6.  By  death.  Titles  which 
are  both  legal  and  equitable  may  be  acquired  in  either  of 
these  methods.  Titles  which  are  purely  equitable  may  be 
acquired  by  either,  except  the  first;  and  those  which  are 
purely  legal  may  be  transferred  by  either,  except  the  first, 
fourth  and  fifth.  It  is  the  plan  of  this  chapter  to  treat  the 
subject  of  title  under  this  sixfold  division;  and,  in  general, 
to  treat  it  with  a  view  to  title  which  is  both  legal  and  equi- 
table, and  is  therefore  complete ;  but  also,  to  incorporate 

228 


CHAP.  XI.]  TITLE.  229 

into  that  treatment  such  statements  as  may  show  the  rela- 
tions which  purely  legal  and  purely  equitable  titles  bear  to 
each  other  and  to  the  law,  and  to  conclude  the  whole  with 
a  discussion  of  such  points  as  relate  to  patents  owned 
contemporaneously  by  a  plurality  of  persons. 

§  273.  Title  by  occupancy  is  that  title  to  a  patent  which 
a  person  may  acquire  by  inventing  any  new  and  useful  pro- 
cess, machine,  manufacture,  composition  of  matter  or  design, 
and  by  applying  for  and  obtaining  a  patent  thereon.  During 
the  time  between  the  day  of  invention  and  the  date  of 
letters  patent  therefor,  that  title  is  inchoate,  but  is  never- 
theless recognized  by  both  law  and  equity.1  Such  an  in- 
choate right  may  be  assigned  ;  and  an  assignment  thereof 
will  convey  the  legal  title  to  the  letters  patent,  as  soon  as 
the  letters  patent  are  granted.8  This  rule  applies  not  only 
to  cases  where  the  assignments  are  recorded  before  the 
granting  of  the  patents,3  but  also  to  cases  where,  though 
executed  before,  they  are  not  recorded  till  after  that  event.4 
So  also,  it  applies  to  cases  where  applications  are  divided 
after  they  are  assigned,5  and  to  cases  where  the  assignments 
are  executed  after  the  applications  for  patents  are  rejected, 
and  before  those  rejections  are  reversed.6  The  inchoate 
right  to  a  Patent  Office  extension  of  a  patent,  when  such  a 
right  was  provided  by  law,7  was  also  a  proper  subject  of 
assignment,  even  while  it  remained  inchoate ; 8  and  such  an 
assignment  also  operated  to  convey  the  legal  title  to  such 
an  extension,  whenever  such  an  extension  was  granted  by 
the  Commissioner  of  Patents.9 


1  Gayler  v.  Wilder,  10  Howard,  5  Puetzc.  Bransford,31  Fed.  Rep. 
493,  1850;  Hendrie  v.  Sayles,  98  U.  461,  1887. 

S.  551, 1878.  «  Gay  v.  Cornell,  1  Blatch.  510, 

2  Gayler  0.  Wilder,  10  Howard,  1849. 

493.  1850.  7  From  July  4,  1836,  to  March  2, 

3  Consolidated  Electric  Light  Co.  1861. 

v.  Edison  Electric  Light  Co.  25  Fed.  8  Nicholson  Pavement  Co.  v.  Jen- 
Rep.  719,  1885.  kins,  14  Wallace,  456, 1871. 

4  United  States  Stamping  Co.  v.  » Railroad   Co.    v.   Trimble,    10 
Jewett,  7  Fed.  Rep.  869,  1880.  Wallace,  380,  1870. 


230  TITLE.  [CHAP.  xi. 

The  title  by  occupancy,  which  an  inventor  acquires  when 
he  invents,  is  not  affected  by  the  fact  that  he  is  at  the  time 
in  the  employ  of  another ; l  for  persons  employed,  as  much 
as  employers,  are  entitled  to  their  own  independent  inven- 
tions.2 The  original  title  of  a  patentee  to  a  patent  issued 
to  him,  is  presumed  to  continue  till  he  is  shown  to  have 
parted  with  it;3  and  the  grantee  named  in  a  reissue  patent 
is  presumed  to  be  the  lawful  owner  of  that  patent  until  he 
is  shown  not  to  have  owned  the  patent  which  he  surren- 
dered in  order  to  obtain  that  reissue,  or  is  shown  to  have 
parted  with  the  title  to  the  reissue  after  that  date.4 

§  274.  An  assignment  of  a  patent  is  an  instrument  in 
writing,  which,  in  the  eye  of  the  law,  purports  to  convey  the 
entire  title  to  that  patent,  or  to  convey  an  undivided  share 
in  that  entire  title.5  An  assignment  may  purport  to  convey 
the  ownership  of  the  patent,  or  an  undivided  share  of  that 
ownership,  or  it  may  purport  to  convey  the  exclusive  right, 
or  an  undivided  share  thereof,  to  make,  use  and  sell  the 
invention  throughout  the  United  States.  Such  a  document, 
in  the  latter  form,  is  as  truly  an  assignment,  as  is  a  docu- 
ment which  employs  the  other  phraseology.6  And  an  assign- 
ment in  either  form,  is  not  less  an  assignment  because  it  is 
coupled  with  a  license  back  to  the  assignor.7 

Assignments  of  legal  titles  to  patents  must  be  in  writing, 
because  the  statute  provides  no  other  method  of  effecting 
such  an  assignment  ;8  and  because,  since  patent  rights  are 
creatures  of  statute  and  not  of  common  law,  the  transfer  of 


1  Hapgood  v.  Hewitt,  119  U.  8.  477, 1850;  Waterman  v.  Mackenzie, 
226,    1886;     Solomons    v.    United  138  U.  8.  255,  1891;  Pope  Mfg.  Co. 
States,  137  U.  8.  346, 1890;  Dalzell  ®.  G.  &  J.  Mfg.  Co.  144  U.  8.  249, 
0.  Dueber  Mfg.  Co.  149  U.  8.  320,  1892. 

1893.  6  Rapp  D.  Kelling,  41  Fed.  Rep. 

2  Agawam  Co.  v.  Jordan,  7  Wai-  792,  1890;   Johnson  Signal  Co.  v. 
lace,  583,  1868.  Union  Signal  Co.  59  Fed.  Rep.  23, 

3  Fischer  *.  Neil,  6  Fed.  Rep.  89,  1893. 

1881.  7  Pope  Mfg.  Co.  v.  Clark,  46  Fed. 

^Washburn  &  Moen  Mfg.  Co.  ®.  Rep.  792,  1891;  Russell  ®.  Kern,  58 

Haish,  4  Fed.  Rep.  900,  1880.  Fed.  Rep.  384, 1892. 

*  Gayler  v.  Wilder,  10  Howard.  »  Revised  Statutes,  Section  4898. 


CHAP.  XI.]  TITLE.  231 

the  legal  title  thereto  cannot  be  regulated  by  the  rules  of 
the  latter  system.1  But  an  equitable  title  may  be  created 
by  parol  ;2  and  such  a  title  may,  perhaps,  by  parity  of  rea- 
soning, be  transferred  by  the  same  method.  But  a  recital 
in  a  writing  that  a  particular  person  is  an  owner  with  the 
subscriber  of  a  patent  granted  to  the  latter,  is  not  even  an 
equitable  assignment.3 

Titles  conveyed  by  assignments  are  usually  unconditional, 
but  they  may  also  be  held  upon  special  tenures.  One  in- 
stance of  such  a  tenure  is  presented  where  the  assignment 
contains  a  condition  that  the  assignee  shall  pay  a  specified 
royalty  to  the  assignor  during  the  life  of  the  patent  assigned,4 
or  shall  sell  the  patent  and  pay  the  proceeds  to  the  assignor, 
or  to  others  for  his  benefit,5  or  shall  not  make  any  assign- 
ment of  the  patent  or  license  under  it.6  And  other  estates 
than  a  complete  one,  may  be  created  in  patents  by  assign- 
ments. An  estate  for  years  and  an  estate  in  remainder  are 
examples  of  these.7 

§  275.  The  patent  assigned  ought  to  be  described  in  the 
assignment  by  its  number  and  date,  and  by  the  name  of  the 
patentee,  and  by  the  name  of  the  invention  which  it  pur- 
ports to  cover ;  but  an  assignment  will  be  valid  though  it  is 
lacking  or  erroneous  in  one  or  more  of  these  particulars,  if 
the  description  which  it  contains  excludes  doubt  as  to  the 
patent  intended  to  be  conveyed.8  The  designation  of  the 
assignee  in  an  assignment,  is  also  sufficient  where  the  per- 
son intended  can  be  identified,  even  where  evidence  outside 


!Gayler  v.  Wilder,  10  Howard,  Whitehurst,  56  Fed.  Rep.  594, 1893. 

498,  1850.  6  Platt  «.  Fire  Extinguisher  Co. 

2  Dalzell  v.  Dueber  Mfg.  Co.  149  59  Fed.  Rep.  901,  1894. 

U.  S.  320, 1893;  Whiting  v.  Graves,  7  Solomons  v.  United  States,  21 

3  Bann.  &  Ard.  225, 1878.  Court  of  Claims,  481,  1886. 

3  Kearney  v.  Railroad  Co.  27  Fed.  8  Case  v.  Morey,  1  New  Hamp- 
Rep.  701,  1886.  shire,  349,  181b;  Holden  v.  Curtis, 

4  Littlefleld  v.  Perry,  21  Wallace,  2  New  Hampshire,  63,  1819;  Har- 
220, 1874;   Boesch  «.  Graff,  133  U.  mon  v.  Bird,  22  Wendell  (N.Y.),  113, 
S.  701, 1890.  1839;  Hill  «.  Thuermer,  13  Indiana, 

6  Jonathan    Mills   Mfg.     Co.    v.  351, 1859. 


232  TITLE.  [CHAP.  xi. 

of  the  assignment  is  required  for  that  purpose.1  An  assign- 
ment of  an  invention  or  patent  for  a  machine  will  not  con- 
vey any  patent  for  a  process  in  the  performance  of  which 
that  machine  finds  its  only  utility.2  An  assignment  by  a 
natural  person  requires  no  other  authentication  than  the 
assignor's  signature ;  and  where  such  an  assignment  is  exe- 
cuted by  an  attorney  in  fact,  it  must  be  executed  in  the 
name  of  the  assignor,  and  cannot  lawfully  be  executed  by 
the  attorney  in  his  own  name.3  Assignments  are  sometimes 
acknowledged  before  magistrates ;  but  if  such  an  acknowl- 
edgment is  of  any  value,  it  is  so  merely  because  it  obviates 
the  necessity  of  proving  the  signature  of  the  assignor,  and 
if  it  obviates  that  necessity,  it  does  so  by  virtue  of  the  law 
of  the  particular  State  in  which  it  was  acknowledged.4  An 
assignment  by  a  corporation  needs  not  to  be  authenticated 
by  its  corporate  seal,  but  is  properly  executed,  if  executed 
in  the  name  and  by  the  authority  of  the  corporation,  and 
by  a  proper  officer,  who  signs  for  the  corporation,  and  signs 
as  an  officer  thereof.5  An  assignment  to  a  corporation  con- 
fers no  title  upon  any  stockholder  therein ; 6  and  an  assign- 
ment to  a  corporation  which  is  not  organized  till  after  the 
date  of  the  assignment  will,  at  least  by  way  of  estoppel, 
inure  to  its  benefit  when  organized,  and  will  be  good  as 
against  the  assignor.7 

A  married  woman,  an  infant,  or  a  person  under  guardian- 
ship may  be  the  assignee  of  an  invention  or  of  a  patent. 
Such  persons  may  also  assign  their  inventions  or  patents 
by  complying,  not  only  with  the  United  States  law  which 
requires  assignments  of  patents  to  be  in  writing,  but  also 


1  Fisk  Clark  &  Flagg  v.  Hollan-  tion  «.  Tilden,  14  Fed.  Rep.  740, 
der,   MacArthur  &   Mackay,    360,  1882. 

1883.  6  Gottfried  v.  Miller,  104  U.  S. 

2  Downton  v.  Mfg.  Co.  9    Fed.  527. 1881. 

Rep.  402,  1879;  Downton  v.  Allis,  6  Gottfried  ®.  Miller,  104  U.  S. 

9  Fed.  Rep.  771,  1881.  528,  1881. 

3  Machesney  0.  Brown,  29  Fed.  7  Dyer  ®.  Rich,  1  Metcalf  (Mass.), 
Rep.  145,  1886.  180,  1840. 

4  New  York  Pharmical  Associa- 


CHAP.  XI.]  TITLE.  233 

witH  those  laws  of  their  particular  States  which  govern 
analogous  acts  of  such  persons.1 

§  276.  An  assignment  for  which  the  consideration  was 
never  paid,  and  which  was  never  acted  upon  by  either  of 
the  parties  thereto,  conveys  no  title  to  the  assignee ; 2  but 
no  assignment  which  has  been  acted  upon  by  the  parties 
thereto  can  be  revoked  on  the  ground  of  a  partial  failure  to 
pay  the  promised  price.3 

§  277.  Bights  of  action  for  past  infringements  of  a  patent 
are  not  conveyed  by  any  mere  assignment  of  that  patent ; 4 
but  they  may  be  conveyed  by  any  assignment  which  pur- 
ports to  convey  them,  whether  that  document  purports  also 
to  convey  the  patent,5  or  purports  to  convey  the  rights  of 
action  alone.6 

§  278.  The  construction  of  assignments  depends  primarily 
upon  the  meaning  of  all  the  language  in  which  they  are 
composed,  rather  than  upon  that  of  any  particular  words 
they  contain ; 7  and  if  that  language  is  clear  in  the  eye  of 
the  law,  its  effect  cannot  be  varied  by  any  parol  evidence ; 8 
but  if  that  language  is  ambiguous,  it  may  be  construed  in 
the  light  of  certain  classes  of  parol  proof.  The  parties  will 
never  be  permitted  to  testify  what  they  intended  to  signify 
by  the  language  they  used,  because  if  they  were,  assignors 
might  narrow,  and  assignees  might  widen,  the  scope  of  the 
rights  conveyed,  by  simply  making  oath  to  alleged  former 
states  of  their  own  minds.  Perjury  could  seldom  be  de- 
tected in  such  a  case,  and  such  a  rule  would  put  property 
at  the  mercy  of  avarice.  Nor  is  any  evidence  admissible 

1  Fetter  v.  Newhall,  17  Fed.  Rep.  May  v.  County  of  Saginaw,  32  Fed. 
843, 1883.  Rep.  629,  1888. 

2  Railroad    Co.    v.    Trimble,    10  6  Hamilton  «.  Rollins,  3  Bann.  & 
Wallace,  380,  1870.  Ard.  160.  1877;  Jones  v.  Berger,  58 

3  Hartshorn  v.  Day,  19  Howard,  Fed.  Rep.  1007, 1893. 

222,  1856;  Mackaye  v.  Mallory,  12  6  flayward  «.  Andrews,  12  Fed. 

Fed.  Rep.  328, 1882.  Rep.  7«6,  1882. 

4  Moore  v.  Marsh,  7  Wallace,  515,  7  Washburn  ®.   Gould,  3    Story, 
1868;  May  v.  County  of  Juneau,  30  122, 1844. 

Fed.  Rep.  245, 1887;  Koalatype  Co.  8  Railroad  Co.  t>.  Trimble,  10 
«.  Hoke,  30  Fed.  Rep.  444,  1887;  Wallace,  367, 1870. 


234  TITLE.  [CHAP.  XI. 

which  merely  shows  that  one  of  the  parties  to  an  assign- 
ment made  such  declarations,  or  did  such  acts,  in  pursuance 
of  that  assignment,  as  indicate  that  he  understood  the  docu- 
ment in  a  sense  most  favorable  to  himself.  If  such  evidence 
were  admissible,  the  honest  mistake  of  an  assignor,  in  con- 
struing his  contract,  would  often  deprive  an  assignee  of 
rights  which  he  had  honestly  bought ;  and  the  honest  mis- 
take of  an  assignee  would  often  deprive  an  assignor  of 
rights  which  he  never  had  'sold.  But  parol  evidence  is 
admissible  to  construe  an  ambiguous  assignment,  if  that 
evidence  shows  the  existence  of  such  collateral  documents, 
or  surrounding  circumstances,  attending  the  execution  of 
that  assignment,  as  throw  light  upon  the  meaning  of  its 
words  ;x  or  show  that  both  parties  to  that  assignment, 
practically  construed  it,  after  its  execution,  and  in  so  doing 
construed  it  alike.2  If  ambiguities  still  remain  in  an  assig- 
ment  after  all  other  recognized  methods  of  solving  them 
have  been  employed,  they  are  to  be  solved  against  the 
grantor,  in  a  suit  between  him  and  the  grantee,  or  their 
respective  privies,  as  he  is  supposed  to  have  written  the 
document,  and  therefore  to  be  chargeable  with  the  obscurity  ;3 
but  as  between  the  grantee  or  his  privies,  and  strangers  to 
the  assignment,  ambiguities  in  such  cases  are  solved  against 
the  grantee.4 

§  279.  Keformation  of  an  assignment  may  be  had  by 
means  of  a  bill  in  equity  filed  for  that  purpose,  if  that  as- 
signment does  not  conform  to  the  mutual  intention  of  the 
parties  to  its  execution ;  but  neither  party  can  secure  such 


1  Read  v.  Bowman,    2    Wallace,  Coleman   v.   Grubb,    23  Penn.  St. 
591,    1864;    Phelps   v.    Classen,   1  409,  1854;  Levy  v.  Dattlebaum,  63 
Woolworth,  212,  1868;  Wetherell,  Fed.  Rep.  994,  1894. 

v.  Zinc  Co.  6  Fisher,  50, 1872;  Low-  3  Smith  v.  Selden,  1  Blatch.  475, 

rey  0.  Cowles  Co.  56  Fed.  Rep.  492,  1849;  May  «.  Chaffee,  2  Dillon,  385, 

1893,  and  68  Fed.  Rep.  366,  1895.  1871;  Falley  v.  Giles,  29  Indiana, 

2  Topliff  v.  Topliff,  122  U.  S.  131,  114,  1867. 

1886;  Wilcoxen «.  Bowles,  1  Louisi-  4  Levy   «.    Dattlebaum,  63  Fed. 

ana   An'l.    230,    1846;    Parrott   v.  Rep.  994,  1894. 
Wikoff,  1  Louisiana  An'l.  232, 1846. 


CHAP.  XI.]  TITLE.  235 

reformation  on  proof  of  what  his  intention  was,  unless  he 
also  proves  that  the  intention  of  the  other  party  was  the 
same.1  But  no  reformation  of  an  assignment  can  affect  the 
right  of  any  innocent  purchaser,  for  a  valuable  consider- 
ation, who  had  no  notice,  at  the  time  of  his  purchase,  that 
the  mutual  intention  of  the  parties  was  different  from  the 
assignment  which  passed  between  them.2 

§  280.  No  extension  of  a  patent  is  conveyed  by  an  assign- 
ment of  the  first  term  thereof.3  Nor  is  any  extension,  which 
is  not  provided  for  by  the  general  law  when  an  assignment 
is  made,  covered  by  the  word  "  renewal "  in  such  an  assign- 
ment. In  such  a  case,  that  word  is  held  to  mean  "  reissue  " 
and  not  to  mean  "  extension."4  But  if,  at  the  time  such  an 
assignment  is  made,  the  patent  statutes  do  provide  for 
extensions  of  patents  of  the  class  to  which  the  assigned  patent 
belongs,  then  the  word  "  renewal "  is  a  sufficient  word  to 
convey  such  an  extension.5  An  assignment  of  an  invention, 
without  limitation  or  qualification,  will  convey,  not  only  the 
original  term,  but  also  any  Patent  Office  extension,  of  the 
patent  granted  for  that  invention.6  Whether  such  an  as- 
signment will  convey  any  Congressional  extension  is  an 
undecided  point.  An  affirmative  decision  upon  it  will  not 
necessarily  follow  the  rule  in  Hendrie  v.  Sayles,  but  it  is 
not  improbable  that  the  courts  will  take  the  step  required 
to  pass  from  the  one  doctrine  to  the  other,  whenever  the 
question  arises. 

§  281.  Recording  in  the  Patent  Office,  within  three  months 
after  its  date,  is  necessary  to  the  validity  of  an  assignment 
or  grant  of  a  patent  as  against  any  subsequent  purchaser  or 
mortgagee,  for  a  valuable  consideration,  without  notice.7 


1  Downton  v.  Allis,  9  Fed.  Rep.  646,  1846. 

771,  1881.  apittst).  Hall.  3  Blatch.  201,1854; 

3  Gibson  v.  Cook,  2  Blatch.  149,  Goodyear  «.  Cary,  4  Blatch,  803, 

1850;  Woodworthfl.  Cook,  2  Blatch.  1859;  Chase  v.  Walker,   3  Fisher, 

151,  1850.  122  1866. 

3  Wilson  v.  Rousseau,  4  Howard,  6  Hendrie  v .  Sayles,  98  U.  S.  554, 
646.  1846.  1878. 

4  Wilson  v.  Rousseau,  4  Howard,  7  Revised  Statutes,  Section  4898. 


236  TITLE.  [CHAP.  xi. 

This  statutory  provision  operates  to  give  constructive  notice 
to  subsequent  purchasers  and  mortgagees,  of  the  assign- 
ments which  are  duly  recorded  thereunder  ;  but  it  does  not 
apply  to  any  assignment  executed  prior  to  the  granting  of 
letters  patent,  unless  that  assignment  is  one  upon  which  a 
patent  is  to  be  issued  to  the  assignee,  and  also  identifies 
with  certainty  the  invention  conveyed  thereby.1  But  where 
an  assignment  conveys  a  patent,  and  also  conveys  all  im- 
provements that  the  assignor  may  thereafter  make  on  the 
invention  claimed  therein,  the  due  recording  of  that  assign- 
ment operates  to  give  constructive  notice,  not  only  of  the 
sale  of  that  patent,  but  also  of  the  sale  of  those  improve- 
ments.2 Nor  does  the  provision  apply  to  any  assignment 
made  by  a  judge  or  register  in  bankruptcy,  under  title  LXI. 
of  the  Revised  Statutes ;  but  such  an  assignment  though 
unrecorded  more  than  three  months  after  its  date  and 
delivery,  will  prevail  against  a  subsequently  executed  but 
previously  recorded  assignment  of  the  bankrupt  or  his 
executor  or  administrator.3  Neither  does  the  provision 
apply  to  any  assignment  which  conveyed  accrued  rights  of 
action  only.4  In  such  a  case,  the  assignee,  in  order  to  pro- 
tect his  right,  should  give  the  infringer  notice  of  the  assign- 
ment ;  so  that  if  the  infringer  afterward  pays  the  assignor, 
or  pays  some  subsequent  assignee,  for  that  right  of  action, 
he  will  do  so  at  his  peril,  and  will  not  discharge  his  liability 
to  the  first  assignee.5  Recording  an  assignment  of  a  patent, 
is  not  necessary  to  its  validity,  as  between  the  parties  to 


1  Wright  v.  Randal,  8  Fed.  Rep.  5  Woodbridge  ».  Perkins,  3  Day 

599,  1881;  New  York  Paper  Bag  (Connecticut),  364,  1809;  Vanbus- 

Co.  ».  Union  Paper  Bag  Co.  32  Fed.  kirk  v.  Hartford  Fire  Insurance  Co. 

Rep.  788,  1887.  14  Connecticut,  144, 1841;  Campbell 

SAspinwall  Mfg.  Co.  «.  Gill,  32  v.  Day,  16  Vermont,  558, 1844;  Clod- 
Fed.  Rep.  701,  1887.  felter  v.  Cox,  1  Sneed  (Term.).  330, 

3  Prime  v.  Mfg.   Co.   16   Blatch.  1853;  Loomis  v.  Loomis,   26   Ver- 
456,  1879.  mont,  198, 1854;  Murdock  v.  Finney, 

4  Gear  v.  Fitch,  3  Bann.  &  Ard.  21  Missouri,  138, 1855;  Me  Williams 
573,  1878.  «.  Webb,  32  Iowa,  577, 1871. 


CHAP.  XI.]  TITLE.  237 

that  assignment  ;l  nor  as  against  an  infringer  of  the  patent  ;2 
nor  as  against  an  innocent  purchaser  for  a  valuable  con- 
sideration without  notice,  who  takes  his  assignment  within 
three  months  after  the  date  of  the  prior  unrecorded  assign- 
ment ;3  nor  as  against  any  subsequent  purchaser  who  had 
actual  notice  thereof,  when  purchasing  ;*  nor  as  against  any 
subsequent  purchaser  who  paid  no  valuable  consideration 
for  the  assignment  which  he  took.5  A  merely  good  con- 
sideration will,  therefore,  not  support  an  assignment  as 
against  any  prior  unrecorded  assignment  of  the  same  pat- 
ent, given  for  a  valuable  consideration. 

The  notice  which  will  protect  a  prior  unrecorded  assign- 
ment, against  a  subsequent  assignment  for  a  valuable  con- 
sideration, may  be  actual,  or  it  may  be  constructive  only. 
Such  constructive  notice  may  be  based  on  the  fact  that  the 
subsequent  assignee  was  informed,  at  the  time  of  his  pur- 
chase, that  the  prior  assignee  was  making,  using,  or  selling 
specimens  of  the  invention  covered  by  the  patent  involved. 
Such  making,  using,  or  selling  is  such  a  possession  of  the 
invention,  as  charges  all  purchasers  who  are  cognizant 
thereof,  with  notice  of  whatever  title  the  maker,  user,  or 
seller  may  possess.6  Whether  such  constructive  notice  may 
also  be  based  on  the  fact  that  the  subsequent  purchaser 
was  a  corporation  in  which  the  assignor  was  a  director,  is  a 
question  upon  which  the  precedents  are  now  opposing.7 

1  Holden  «.  Curtis.  2  New  Hamp-  377,    1847;    Continental    Windmill 
shire,  61,  1819;    Case  v.  Redfield,  4  Co.    «.    Empire    Windmill    Co.    8 
McLean,  527,  1849;  Black  v.  Stone,  Blatch.  295,  1871;  Ashcroftt).  Wal- 
33  Alabama,  327.   1858;    Moore   v.  worth,  1  Holmes,  152.  1872. 

Bare,  11  Iowa,  198,  1860;  Turnbull  5  Saxton    t>.    Aultman,    15   Ohio 

t>.  Plow  Co.  6  Bissell,  229,  1874.  State,  471,  1864 

2  Brooks  «.  Byam,  2  Story,  525,  «  Prime  v.  Mfg.  Co.    16   Blatch. 
1843;  Pitts  v.  Whitman,    2   Story,  455,  1879;  Dueber  Watch  Case  Co. 
609,  1843;  Boyd  v.  M'Alpin,  3  Me-  t>.  Dalzell,  38  Fed.  Rep.  597,  1889. 
Lean,  427,  1844;  Case  v.  Redfield,  7  Continental    Windmill    Co.    «. 
4  McLean,  526,  1849;  McKernan  v.  Empire  Windmill  Co.  8  Blatch.  295, 
Hite,  6  Indiana,  428,  1855;  Sone  v.  1871;    Cutter   Co.    v.    Sheldon,    10 
Palmer,  28  Missouri.  539,  1859.  Blatch.  1,  1872;  Davis  Wheel  Co. 

3Gibson«.Cook, 2  Blatch.  144, 1850      v.  Davis  Wagon  Co.  20  Fed.  Rep. 
4  Peck  v.  Bacon.  18  Connecticut,      700,  1884. 


238  TITLE.  [CHAP.  xi. 

Where  title  has  once  vested  in  a  subsequent  purchaser,  for 
a  valuable  consideration,  without  notice  of  a  prior  unre- 
corded assignment  more  than  three  months  old  ;  that  title 
becomes  absolute  and  may  be  purchased  by  persons  who 
had  actual  knowledge  of  the  prior  assignment.1  If  this  rule 
were  otherwise,  titles  thus  derived  might  become  valueless 
for  want  of  qualified  purchasers.2 

The  foregoing  parts  of  this  section  contemplate  cases 
where  the  things  covered  by  several  assignments  of  the 
same  assignors,  are  unquestionably  identical;  and  where 
there  is  no  ground  for  controversy  relevant  to  the  respective 
dates  of  the  conflicting  transactions.  Where  either  or  both 
of  these  circumstances  are  otherwise,  other  points  of  law 
will  also  arise.  Where,  for  example,  the  subsequent  assign- 
ment purported  to  convey  no  more  than  the  right,  title,  and 
interest  of  the  assignor,  in  the  specified  patent,  that  assign- 
ment can  never  prevail  against  any  prior  unrecorded 
assignment  which  left  any  interest  in  the  assignor  ;3  if  indeed 
it  can  prevail  against  one  which  left  no  such  interest.4 

The  date  of  an  assignment  is  the  day  of  its  delivery,  and 
not  the  date  which  appears  upon  its  face,  if  the  latter  differs 
from  the  former  ;5  and  the  three  months  within  which,  after 
that  date,  an  assignment  is  required  to  be  recorded,  are 
calendar  months.6 

§  282.  Warranty  of  title  is  implied  in  every  assignment  of 
a  patent  right  unless  that  assignment  purports  to  convey 
merely  the  right  of  the  assignor ;  or  unless  it  is  otherwise 
limited  to  narrower  ground  than  the  entire  patent  right 
which  it  describes.  Every  such  assignment  will  therefore 


1  Wright  v.  Randall,  8  Fed.  Rep.  Vapor  Engine  Co.  v.  Pacific  Gas 
599,  1881.  Engine  Co.  47  Fed.  Rep.  513,  1891. 

2  Varick  v.  Briggs,  6  Paige  (N.Y.)  4  Oliver  v.  Piatt,  3  Howard,  363, 
329,  1837;  Empire  State  Nail  Co.  v.  1845;  May  «.  LeClaire,  11  Wallace, 
Faulkner,  55  Fed.   Rep.  824,   1893.  232,  1870. 

3  Brown  v.  Jackson,  3  Wheaton,  5  Dyer  v.  Rich,  1  Metcalf  (Mass.), 
449,  1818;  Ashcroft  v.   Walworth,  180,  1840. 

1   Holmes,  152,  1872;    Turnbull  v.  6  Guaranty  Trust  Co.  «.  Railroad 

Plow  Co.  6  Bissell,  230, 1874;  Regan  Co.  139  U.  S.  145,  1890. 


CHAP.  XI.]  TITLE.  239 

transfer  whatever  title  the  assignor  may  subsequently 
acquire  by  purchase  or  otherwise.1  But  an  assignment  of 
the  right,  title,  and  interest  of  the  assignor  without  any- 
thing more,  will  not  operate  to  convey  any  title  which  is 
subsequently  acquired  by  him.8 

§  283.  No  warranty  of  validity  is  implied  in  any  assign- 
ment of  a  patent  right.  If  the  assignor  knows  the  patent 
to  be  invalid,  at  the  time  he  makes  the  assignment,  he  is 
guilty  of  fraud,  and  the  assignee  may  have  relief  against 
him,  on  that  ground ;  but  if  both  parties  are  equally  inno- 
cent of  knowledge  of  invalidity,  the  loss  consequent  on  any 
invalidity  afterward  brought  to  light,  must  fall  upon  the 
then  owner  of  the  patent.3 

Some  State  courts  have  held,  that  when  sued  by  an 
assignor  for  the  purchase  price  of  a  patent,  any  assignee 
may  defend  on  any  ground  of  invalidity  which  he  can  prove 
to  exist.  This  view  is  based  on  the  theory  that  in  such  a 
case  there  is  a  failure  of  consideration.  This  theory  is  not 
correct,  because  an  assignor  may  lose,  and  an  assignee  may 
gain  as  much  on  account  of  the  assignment  of  an  invalid 
patent  as  on  account  of  a  valid  one.  An  assignment  of  an 
invalid  patent  is  a  sufficient  consideration  to  support  a 
promissory  note,  in  any  case  where  there  is  neither  war- 
ranty nor  fraud.4  To  allow  an  assignee,  who  has  made 
profit  from  the  patent  assigned,  to  defend  against  a  suit  for 
the  promised  price,  on  the  ground  of  some  defect  he  has 
been  able  to  discover  in  the  patent,  would  be  very  unjust.5 
Such  a  rule  might  enable  an  assignee  to  reap  enormous 
gains  from  practically  exclusive  rights,  and  then  to  avert 
payment  for  those  rights,  on  some  far-fetched  ground  of 
invalidity,  which  never  for  one  moment  had  disturbed  his 


1  Faulks  v.  Kamp,  17  Blatch.  433,  Battle's  Equity  Cases  (N.  C.),  315, 
1880.     Brush  Electric  Co.  v.  Call-  1836;    Cansler  v.   Eaton,   2  Jones' 
fornia  Electric  Light  Co.  52  Fed.  Equity  Cases  (N.  C.),  499,  1856. 
Rep.  963,  1892.  4  Thomas  v.  Quintard,  5  Duer  (N. 

2  Perry  v.  Corning,  7  Blatch.  195,  Y.),  80,  1855. 

1870.  5  Milligan  ».   Mfg.    Co.   21  Fed. 

»  Hiatt  v.  Twomey,  1  Devereux  &  Rep.  570,  1884. 


240  TITLE.  [CHAP.  XI. 

exclusive  possession  of  the  patented  privilege.  Even  where 
an  assignee  is  not  shown  to  have  derived  any  benefit  from 
the  assignment  of  a  particular  patent,  he  ought  not  to  be 
permitted  to  defend  against  a  suit  for  the  price  he  promised 
to  pay  therefor ;  because  that  assignment  operated,  at  least 
to  prevent  the  assignor  from  making,  using,  or  selling  speci- 
mens of  the  patented  thing.  It  is  perfectly  well  settled 
that  loss  or  disadvantage  to  the  promisee,  is  a  sufficient 
consideration  to  support  a  contract,  even  where  that  con- 
tract resulted  in  no  benefit  to  the  promisor.1 

§  284.  Express  warranties  of  validity  may  of  course  be 
incorporated  in  assignments  of  patents  ;  and  where  so  incor- 
porated, they  will  subject  assignors  to  actions  for  damages, 
if  the  patents  assigned  are  found  to  be  in  fact  invalid.2 
Parol  warranties  of  validity,  when  they  accompany 
written  assignments  of  patents,  are  inadmissible  as  founda- 
tions for  actions  for  damages  based  on  alleged  invalidity 
of  those  patents  ;3  but  such  parol  statements  maybe  admis- 
sible as  aiding  to  prove  fraud,  in  a  case  where  other  evidence 
shows  that  the  assignor  knew  the  patent  to  be  invalid 
when  he  made  the  assignment.4  In  such  a  case,  however, 
the  assignee's  right  of  action  rests  upon  the  fraud  and  not 
upon  the  parol  warranty.5  It  follows,  therefore,  that  the 
parol  warranties  of  validity  which  sometimes  accompany 
assignments  of  patents  have  little  legal  value. 

§  285.  Equitable  titles  to  patent  rights  may  arise  in  a  num- 
ber of  different  ways.  Such  a  title  accrues  to  an  assignee 
when  a  patent  is  granted  to  an  inventor,6  or  to  a  subsequent 
assignee  chargeable  with  notice,7  for  an  invention  made  or 


1  Parsons  on  Contracts,  Book  2,         5  Rose  v.  Hurley,  39  Indiana,  78, 
Ch.  1,  Sec.  2.  1872. 

2  Wright  v.  Wilson,  11  Richard-         «  Littlefleld  v.  Perry,  21  Wallace, 
son  (S.  C.  Law  Reports'),  151,  1856.  226    1874;    Nesmith   v.    Calvert,  1 

3  Van  Ostrand®.  Reed,  1  Wendell,  Woodbury  &  Minot,  34,  1845;  Con- 
(N.  Y.),  432,  1828;  Jolliffe  v.  Collins,  tinental  Windmill   Co.   v.   Empire 
21  Missouri,  341,  1855.  Windmill  Co.  8  Blatch.  295,  1871. 

4  McClure  v.  Jeffrey,  8  Indiana,          T  Pontiac  Boot  Co.  v.  Merino  Shoe 
83,  1856.  Co.  31  Fed.  Rep.  286,  1887. 


CHAP.  XI.]  TITLE.  241 

completed  or  patented,  after  the  execution  of  an  assignment 
adapted  to  convey  it ;  and  a  document  which  conve}rs  a 
patent,  and  which  also  purports  to  convey  all  improvements 
on  the  invention  covered  thereby  which  may  thereafter  be 
made  by  the  assignor,  is  an  example  of  such  an  assignment.1 
Such  a  title  accrues  to  an  inventor  when  a  patent  is  granted 
to  his  assignee,  in  pursuance  of  an  assignment,  which  was 
accompanied  by  a  contract  providing  that  the  assignee 
should  pay  to  the  inventor  all  or  some  portion  of  the  pro- 
ceeds of  the  patent.2  Such  a  title  accrues  to  an  assignee  -of 
a  term  for  years,  in  a  patent  right,  if  that  term  is  limited  to 
expire  before  the  expiration  of  the  existing  term  of  the 
parent.3  Such  a  title  accrues  to  a  consolidated  corporation 
in  patents  owned  by  its  constituent  corporations.4  Such  a 
title  accrues  to  an  employer,  where  an  employee  makes  an 
invention  in  pursuance  of  a  contract  to  invent  for  that 
employer;5  and  such  a  contract  may  be  an  oral  one,  and 
not  be  within  the  statute  of  frauds.6  And  such  a  title  will 
doubtless  arise  out  of  any  contract  which  purports  to  give 
a  person  a  beneficial  interest  in  a  patent  right ;  but  which 
does  not  amount  to  an  assignment  or  grant  of  legal  title, 
nor  to  a  license  to  make,  to  use,  or  to  sell  the  invention. 
So  also,  any  facts  which  would  create  a  constructive  or  a 
resulting  trust,  if  they  related  to  other  kinds  of  intangible 
personal  property,  will  doubtless  have  the  same  effect  upon 
property  in  patents  when  they  relate  thereto. 

§  286.  In  whatever  way  an  equitable  title  to  a  patent 
right  may  have  arisen,  it  will  be  translated  into  a  legal  title 
in  a  proper  case,7  by  means  of  a  bill  for  specific  performance 


1  Aspinwall  Mfg.  Co.  •».  Gill,  32  6  Bonsack  Mach.  Co.  v.  Hulse,  57 
Fed.  Rep.  699,  1887.  Fed.  Rep.  523,  1893;  Hulse  «.  Bon- 

2  Sayles  v.  Dubuque  &  Sioux  City  sack  Mach.  Co.  65  Fed.  Rep.  864, 
Railroad  Co.  5  Dillon,  563,  1878.  1894. 

8  Cook  v.  Bidwell,  8  Fed.    Rep.  6Dalzell®.  Dueber  Mfg.  Co.  14ft 

452,  1881.  U.  8.  320,  1893. 

4  Edison    Electric    Light   Co.  ».  7  Kennedy  «.  Hazleton,  128  U.  S. 

New  Haven  Electric  Co.  35    Fed.  667,  1888. 
Rep.  236,  1888. 


242  TITLE.  [CHAP.  xi. 

of  contract  or  other  action  in  equity;1  and  where  no 
affirmative  relief  is  sought  by  the  holder  of  an  equitable 
title  to  a  patent,  such  a  title  will  be  upheld  by  a  court  of 
equity,  as  against  all  claims  made  under  the  naked  legal 
title.  But  if  the  holder  of  the  legal  title  assigns  the  patent 
to  a  purchaser  for  a  valuable  consideration,  without  notice 
of  the  equitable  title,  such  a  purchaser  will  take  the  entire 
ownership  of  the  patent,  freed  from  the  prior  equitable 
encumbrance.2  One  district  judge  has  decided  this  point 
the  other  way,  holding  that  the  maxim  caveat  emptor  applies 
to  such  a  case.3  But  that  decision  was  rendered  before 
that  in  Hendrie  v.  Sayles ;  and  was  made  in  evident  forget- 
fulness  of  the  really  applicable  maxim  that,  "  between  equal 
equities  the  law  will  prevail ; "  and  of  the  well  established 
doctrine,  that,  if  a  purchaser  for  a  valuable  consideration, 
without  notice  of  a  prior  equitable  right,  obtains  a  legal 
title  at  the  time  of  his  purchase,  he  will  be  entitled  to 
priority  in  equity,  as  well  as  in  law.4  The  maxim  of  caveat 
emptor  applies  where  a  seller  has  no" title  whatever.5  When 
a  seller  has  the  legal  title,  but  not  the  equitable,  then  the 
other  maxim  governs  the  rights  of  assignees. 

§  287.  A  grant,  from  one  person  to  another,  of  a  patent 
right,  is  a  conveyance  in  writing  of  the  entire  right,  or  of  an 
undivided  interest  therein,  within  and  throughout  a  certain 
specified  portion  of  the  territory  of  the  United  States.6  The 
subject  matter  of  letters  patent  is  not  divisible  in  any  other 
category  than  a  territorial  one ; 7  and  therefore  grants  can 
not  be  made  to  convey  one  of  several  inventions  covered 


1  Hapgood  v.  Rosenstock,  23  Fed.  38,  1879. 

Rep.  87,1885;  New  York  Paper  Bag  6  Gayler  v.  Wilder,  10  Howard, 

Machine  Co.  «.  Union  Paper   Bag  494, 1850;  Moore  v.  Marsh,  7  Wal- 

Machiue-Co.  32  Fed.  Rep.  783.1887.  lace,  521,  1868;  Littlefield  v.  Perry, 

2  Hendrie  v.  Sayles,  98  U.  S.  549,  21  Wallace,  219, 1874. 

1878.  7  Goodyear  v.  Railroad  Co.  1  Fish- 

3  Consolidated  Fruit  Jar   Co.   v.  er.  627,  1853;    Suydam  v.    Day,  2 
Whitney,  2  Bann.  &  Ard.  385.  1876.  Blatch.  21,  1846;  Washing  Machine 

4  Bispham's  Principles  of  Equity,  Co.  v.   Earle,  3  Wallace,  Jr.  320, 
Section  40.  1861. 

5  Abbett  v.  Zusi,  5  Bann.  &  Ard. 


CHAP.  XI.]  TITLE.  243 

by  a  patent  j1  nor  to  convey  an  exclusive  right  to  make,  use 
and  sell  a  patented  invention  for  one  of  several  purposes  to 
which  it  is  applicable.  The  rules  which  relate  to  the  form, 
authentication,  construction,  revocation,  reformation  and 
effect  of  assignments,  refer  with  equal  force  to  grants ; 
except  as  otherwise  stated  or  implied  in  this  section,  and 
except  as  the  explained  nature  of  a  grant  clearly  indicates 
otherwise.  In  addition  to  those  rules,  there  are  several 
which  refer  to  grants  and  not  to  assignments ;  and  to  the 
latter  it  is  now  in  order  to  attend. 

A  grant  is  not  void  for  ambiguity  where  it  purports  to 
convey  all  of  the  territory  of  the  United  States  except  a 
number  of  counties  theretofore  conveyed  to  others,  but  not 
specified  in  the  grant ;  because  the  reservation  is  such  an 
one  as  is  capable  of  being  made  certain  by  competent  evi- 
dence.2 It  is  not  inconsistent  with  the  character  of  a  docu- 
ment as  a  grant,  that  it  contains  a  clause  of  forfeiture  in 
case  of  non-payment  of  royalties,  or  a  clause  providing 
that  the  grantor  shall  prosecute  and  defend  suits  relating 
to  the  exclusive  right  granted.3  And  a  grant  is  not  for- 
feited by  failure  to  pay  a  royalty;  or  to  keep  some  other 
promise  made  by  the  .grantee  therein, "unless  the  grant  pro- 
vides that  such  a  failure  shall  work  such  a  forfeiture.4  Nor 
is  it  inconsistent  with  a  grant  that  it  is  subject  to  an  out- 
standing license ; 5  or  that  the  document  limits  the  exercise 
of  the  exclusive  right  to  the  making,  using  and  selling  of  a 
particular  number  of  specimens  of  the  patented  invention 
involved.6  But  no  instrument  can  be  a  grant  which 
reserves  a  right  to  the  grantor  to  make,  but  not  to  sell  or 
use,7  or  to  sell,  but  not  to  make  or  use,8  specimens  of  the 

1  Pope  Mfg.  Co.  v.  Gormully  Mfg.  6  Wilson  t>.  Rousseau,  4  Howard, 

Co.,  144  U.  8.  250.  1892.  646,  1846;  Waterman  v.  Mackenzie, 

3  Washburn  &  Moen  Mfg.  Co.  v.  138  U.  S.  256,  1891;  Washburn  «. 

Haish,  4  Fed.  Rep.  908,  1880.  Gould,  3  Story,  122. 1844;  Ritter  v. 

3  Littlefleld  v.  Perry,  21  Wallace,  Serrell,  2  Blatch.  379,  1852. 

220,  1874.  7  Waterman  v.  Mackenzie,  138  U. 

4  Atkins  v.    Park,  61  Fed.  Rep.      S.  256,  1891. 

957,  1894.  8  Pitts  v.  Jameson,  15  Barbour 

5  Russell  v.  Kern,  58  Fed.  Rep.      (N.  Y.  Supreme  Court),' 315,  1853. 
384,  1893. 


244  TITLE.  [CHAP.  xi. 

patented  thing,  within  the  territory  covered  by  the  instru- 
ment. 

§  288.  A  grant  of  an  exclusive  right  to  make,  use,  and 
sell  a  particular  patented  invention,  within  a  particular  part 
of  the  United  States,  confers  the  right  to  use  and  sell,  any- 
where within  the  United  States,  those  specimens  of  that 
invention  which  are  made  and  sold  under  the  grant,  and 
within  the  territory  covered  thereby.1  And  an  agreement 
between  grantees,  not  to  sell  or  use  the  patented  article  in 
the  territory  of  each  other;  is  not  binding  upon  purchasers 
from  either  of  the  grantees,2  unless  they  buy  with  notice  of 
the  restriction.  But  a  lawful  sale  in  a  foreign  country,  of 
an  article  patented  in  that  country,  and  also  in  the  United 
States,  does  not  authorize  the  use  or  sale  in  the  United 
States  of  the  article  thus  sold  in  the  foreign  country,3  except 
possibly  where  the  patents  of  the  two  countries,  on  that 
article,  are  owned  by  the  same  party,  and  the  foreign  sale 
was  made  by  him.  And  a  patentee  owning  a  United  States 
patent,  and  also  a  patent  of  some  foreign  country,  on  the 
same  article,  may  couple  his  sales  of  that  article  in  any  for- 
eign country,  with  a  restriction  prohibiting  its  importation 
into  the  United  States ;  and  that  restriction  will  be  binding 
upon  all  persons  in  the  United  States  who  have  knowledge 
or  other  notice  thereof.4 

§  288#.  A  mortgage  may  be  executed  to  cover  an  entire 
patent,  or  an  undivided  part  thereof ;  or  the  entire  right,  or 
an  undivided  interest  therein,  within  a  certain  specified 
part  of  the  United  States.  And  the  due  recording  of  such 
a  mortgage  in  the  Patent  Office  makes  the  title  of  the  mort- 
gagee complete ;  so  that  he  is  entitled  to  grant  licenses, 
receive  royalties,  bring  suits  against  infringers,  and  recover 
profits  or  damages  from  them,  as  long  as  his  mortgage 
continues  in  force ;  and  it  will  continue  in  force  until  it  is 

1  Adams  v.  Burke,  17  Wallace,      516,  1888. 

453,  1873;  Hobbie  v   Jennison,  149  a  Boesch  v.  Graff,  133  U.  S.  703, 

U.  S.  355,  1893;  Keeler  t>.  Folding  1890. 

Bed  Co.  157  U.  S.  659,  1895.  4  Dickerson  v.  Matheson,  57  Fed. 

2  Pratt  «.  Mareen,   25  111.  App.  Rep.  524,  1893. 


CHAP.  XI.]  TITLE.  245 

ended  by  a  payment  of  the  debt  secured  thereby,  at  the 
time  provided  for  therein,  or  by  redemption,  on  a  bill  in 
equity,  within  a  reasonable  time  thereafter.1  But  such  a 
mortgage  will  not  affect  an  outstanding  license,  particularly 
where  the  mortgagee  is  chargeable  with  notice  thereof. 2 

§  289.  A  creditor's  bill  may.  operate  to  transfer  a  complete 
title,  or  an  equitable  title,  to  a  patent  right,  whenever  a 
judgment  is  obtained  against  its  owner,  and  an  execution 
issued  on  that  judgment  is  returned  nulla  bona ;  and  the 
court  in  which  the  creditor's  bill  is  filed  may  appoint  a 
trustee  or  master  to  execute  a  proper  assignment.3  But  a 
suit,  instituted  by  the  filing  of  such  a  bill,  is  not  a  patent 
suit  in  such  a  sense  as  to  confer  jurisdiction  on  a  Federal 
court.4  Where  jurisdiction  is  not  conferred  upon  those 
courts  by  variant  citizenship,  or  other  cause  known  to  the 
law,  it  will  be  necessary  to  proceed  in  the  courts  of  the 
States.  In  such  of  the  States  as  have  preserved  equity 
pleadings  and  proceedings,  a  creditor's  bill  is  the  proper 
document  to  file  in  such  a  court,  when  pursuing  such  relief ; 
but  in  the  States  which  have  adopted  codes  of  civil  proced- 
ure, in  place  of  the  common  law  and  equity  plans  of  judi- 
cature, the  end  in  view  may  be  reached  by  what  are  called 
proceedings  supplementary  to  executions.5 

§  290.  Adjudication  of  bankruptcy  and  appointment  of 
an  assignee  operated,  under  the  bankrupt  law  of  1867,  to 
vest  in  such  assignee  all  patent  rights  of  the  bankrupt,6  and 
all  rights  of  action  based  thereon,  except  such  as  were  held 
in  trust  by  him,  and  except  such  as  were  exempted  from 
attachment,  or  seizure,  or  levy  on  execution,  by  virtue  of  the 
laws  of  the  United  States,  or  by  virtue  of  the  laws  of  the 
State  in  which  the  bankrupt  had  his  domicile  at  the  time  of 


1  Waterman  v.  Mackenzie,  138  U.  *  Ryan  0.  Lee,  10  Fed.  Rep.  917, 
S.  256,  1891.  1882. 

2  Waterman  v.  Shipman,  55  Fed.  5  Pacific  Bank  v.   Robinson,  57 
Rep.  984,  1893.  California,  522,  1881. 

3  Ager  v.  Murray,  105  U.  S.  126,  •  Kittle  «.  Hall,  29  Fed.  Rep.  510, 
1881;  Wilson  t.  Fire  Alarm  Co.  52  1887. 

Off.  Gaz.  901,  1890. 


246  TITLE.  [CHAP.  xi. 

i 

the  commencement  of  the  bankruptcy  proceedings.1  But  a 
title  to  a  patent  passed  to  an  assignee  in  bankruptcy,  under 
the  law  of  1867,  subject  to  his  election  not  to  accept  it,  if 
in  his  opinion  it  was  worthless,  or  would  be  burdensome 
and  unprofitable.2  Though  this  bankruptcy  law  was  repealed 
in  1878,  many  titles  to  patents  lately  in  force  were  trans- 
ferred by  its  operation ;  and  it  is  therefore  still  a  law  of 
practical  importance.  Whenever  new  bankruptcy  statutes 
are  hereafter  enacted,  it  is  probable  that  similar  provisions 
will  be  inserted  also  in  them.  Corresponding  proceedings 
in  insolvency  under  State  laws,  do  not  have  the  operation 
of  bankruptcy  proceedings  in  this  particular.  They  do  not 
confer  upon  the  assignee  in  insolvency  any  legal  title  to  the 
patent  rights  of  the  insolvent.3  But  it  is  probable  that 
courts  which  have  jurisdiction  of  such  proceedings  may 
compel  the  insolvent  to  execute  such  an  assignment  to  the 
assignee  in  insolvency,  as  will  convey  the  same  rights  to  the 
latter,  as  those  which,  without  such  a  document,  were  con- 
veyed to  an  assignee  in  bankruptcy  under  the  bankrupt  law 
of  1867.4 

And  the  title  to  the  patents  of  dissolved  corporations  will 
generally  pass,  under  the  operation  of  State  laws,  to  the 
receivers,  or  other  officials  who  are  appointed  to  wind  up 
their  affairs.5 

§  291.  Death  of  an  inventor,  before  the  grant  of  a  patent 
for  his  invention,  causes  a  transfer  of  his  inchoate  title  to 
his  executor  or  administrator,  in  trust  for  the  heirs  at  law 
of  the  deceased  in  case  he  dies  intestate,  or  in  trust  for  his 
devisees  in  case  he  leaves  a  will  disposing  of  the  invention.6 
Such  an  inchoate  title  has  several  of  the  same  qualities,  in 
the  hands  of  the  executor  or  administrator,  that  it  had  in 


1  Revised  Statutes,  Sections  5046,  4  Ager  v.  Murray,   105  U.  S.  131, 
5053,  5045.  1881. 

2  Sessions  ».  Romadka,  145  U.  S.  8McCulloh0.  Association,  45  Fed. 
37,  1892.  Rep.  479,  1891. 

3  Ashcroftfl.Walworth,  1  Holmes,  6  Revised  Statutes,  Section  4896; 
154,  1872;  McCulloh  «.  Association,  De  La  Vergne  Mach.  Co.  •».  Feath- 
45  Fed.  Rep.  479,  1891.  stone,  147  U.  S.  209, 1893. 


CHAP.    XI.]  TITLE.  247 

the  hands  of  the  deceased.  If  it  was  an  unassigned  inchoate 
title  in  the  hands  of  the  inventor,  it  is  likewise  so  in  the 
hands  of  his  legal  representative.  If  the  deceased  had 
parted  with  the  equitable  title,  and  had,  at  his  death,  only 
the  inchoate  legal  title,  the  equitable  title  will  be  unaffected 
by  the  death  of  the  inventor,  and  will  remain  the  property 
of  its  purchaser.1  So  also,  if  the  inventor  had  parted,  prior 
to  his  death,  with  the  inchoate  legal  title,  and  retained  the 
equitable  title,  then  the  latter,  and  not  the  former,  will 
devolve  upon  his  executor  or  administrator.  Death  of  the 
owner  of  any  legal  or  equitable  title  to  a  patent  right  already 
in  existence,  causes  a  transfer  of  that  title  to  his  executor 
or  administrator,  in  like  manner  as  it  causes  the  transfer  of 
any  other  intangible  personal  property  of  the  deceased.2 
Such  a  legal  representative  may  convey  the  title  by  assign- 
ment or  by  grant,  by  means  of  any  suitable  instrument  in 
writing,  and  in  pursuance  of  such  general  or  special  author- 
ity from  the  probate  court  as  is  prescribed,  in  that  behalf, 
by  the  laws  of  the  particular  State  whose  court  that  tribu- 
nal is.3  Where  there  are  several  joint  executors  or  admin- 
istrators, the  assignment  or  grant  of  one  of  them  is  legally 
the  assignment  or  grant  of  them  all;4  and  if  an  adminis- 
trator denominates  himself  an  executor,  or  if  an  executor 
calls  himself  an  administrator,  in  such  a  document,  that 
document  will  be  none  the  less  efficacious  to  convey  the 
title  which  he  holds  in  his  true  capacity.5 

§  292.  Tenancy  in  common,  in  a  patent  right,  will  arise 
whenever  the  sole  owner  of  such  a  right,  in  all  or  in  part 
of  the  territory  of  the  United  States,  conveys  to  another  an 
undivided  interest  in  the  whole  or  in  part  of  the  right  which 


1  Northwestern  Extinguisher  Co.  Dull,  19  Fed.  Rep.  913,  1884. 

v.  Philadelphia  Extinguisher  Co.  1  3  Brooks  v.  Jenkins,  3  McLean, 

Bann.  &  Ard.  177,  1874.  441,  1844. 

2  Brooks  v.  Jenkins,  3  McLean,  4  Wintermute    «.    Redington,    1 
441,  1844;  Hodge  v.  North  Missouri  Fisher,  239,  1856. 

Railroad  Co.  1   Dillon,   104,  1870;  6  Newell  t>.  West,  13  Blatch.  114 

Shaw  Valve  Co.  v.  New  Bedford,  1875. 
19  Fed.  Rep.  753,  1884;  Bradley  v. 


248  TITLE.  [CHAP.  xi. 

he  owns.  Mutual  ownership  of  some  sort  arises  when  a 
plurality  of  persons  are  joint  inventors  of  a  process  or 
thing,  for  which  they  obtain,  a  joint  patent;  and  also  when 
a  plurality  of  persons  obtain,  by  one  assignment  or  grant, 
the  undivided  ownership  of  a  patent,  or  the  undivided  own- 
ership of  a  patent  right  in  a  part  of  the  territory  of  the 
United  States.  Whether  such  mutual  ownership  constitutes 
tenancy  in  common,  or  constitutes  joint-tenancy  is  a  ques- 
tion upon  which  no  positive  answer  can  at  present  be  given ; 
unless  such  an  answer  can .  be  based  upon  the  fact  that  the 
courts,  without  examining  the  question,  generally  treat  such 
mutual  ownership  as  though  it  were,  undeniably  r  tenancy 
in  common.  It  is  therefore  prudent  to  avoid,  as  far  as 
possible,  the  circumstances  which  created  a  joint-tenancy 
at  English  common  law ;  for  if  joint-tenancy  should  be  held 
to  exist  in  any  patent  right,  its  doctrine  of  survivorship 
would  deprive  the  heirs  or  devisees  of  a  dying  joint-tenant 
of  their  just  inheritance,  and  would  confer  that  inheritance 
upon  the  joint-tenant  who  survived.1 

§  294.  One  tenant  in  common  of  a  patent  right  may  exer- 
cise that  right  to  any  extent  he  pleases,  without  the  consent 
of  any  co-tenant.  He  may  make,  use  and  sell  specimens  of 
the  patented  invention  to  any  extent,  and  may  license  others 
to  do  so ;  and  neither  he  nor  his  licensees  can  be  enjoined 
from  a  continuance  in  so  doing.2  Nor  can  any  recovery  of 
profits  or  damages  be  had  against  any  such  licensee  at  the 
suit  of  any  co-tenant  of  any  such  licensor.3  It  seems  to 
logically  follow  that  no  recovery  of  profits  or  damages  can 
be  had  against  one  co-tenant  who,  without  the  consent  of 
the  others,  has  made,  used  or  sold  specimens  of  the  patented 
thing.  That  doctrine  has  however  been  denied  by  one  fed- 
eral judge;4  and  doubted  by  another;5  though  it  has  been 

1  Blackstone,  Book  2,  Ch.  25,  last  8  Dunham  ».  Railroad  Co.  7  Bis- 
paragraph.  sell,  223,  1876. 

2  Clum  v.  Brewer,  2  Curtis,  523,  4  Pitts  v.  Hall,  3  Blatch.  207, 1854. 
1355;  Aspinwall  Mfg.  Co.  ».  Gill,  5  Dunham  v.  Railroad  Co.  7  Bis- 
32  Fed.  Rep.  697,  1887;    Grier  v.  sell,  223,  1876. 

Baynes,  49  Fed.  Rep.  367, 1892. 


CHAP.  XI.  TITLE.  249 

enforced  by  a  third,1  and  by  the  Supreme  Court  of  Massa- 
chusetts ; 2  and  by  the  Supreme  Court  of  New  York.3  Either 
one  of  several  co-tenants  in  a  patent  right  may  of  course 
sell  his  right  independently  of  the  others;4  but  where  joint 
trustees  are  appointed  to  hold  the  legal  title  to  a  patent, 
and  to  manage  it  according  to  their  mutual  judgment  and 
discretion,  a  joint  deed  of  all  those  trustees  is  necessary  to 
convey  that  right  to  another.5 

§  295.  Partition  of  a  patent  right,  held  by  tenancy  in  com- 
mon, may  of  course  be  made  by  the  common  consent  and 
mutual  action  of  all  the  owners  of  that  right ;  but  no  such 
partition  can  be  made  against  the  will  of  either  owner, 
except  possibly  in  a  court  of  equity.  This  rule  follows  from 
the  fact  that  no  partition  of  estates  held  by  tenancy  in  com- 
mon was  compellable  at  common  law;6  and  from  the  fact 
that  no  United  States  statute  has  provided  for  any  such 
partition ;  and  from  the  fact  that  the  State  statutes  relevant 
to  partition  of  property  which  is  held  under  the  laws  of  the 
States,  cannot  apply  to  any  property  which  is  created  by 
the  laws  of  the  nation.  Whether  a  compulsory  partition 
of  a  patent  right,  held  by  tenants  in  common,  is  within  the 
power  of  courts  of  equity,  is  a  question  upon  which  there 
is  probably  no  precedent  in  the  reports. 

1  Whiting  v.  Graves,  3  Bann.  &  4  May  v.  Chaffee,  2  Dillon.  388, 
Ard.  225,  1878.  1871. 

2  Vose  v.  Singer,  4  Allen  (Mass.),  6  Wiscott  v.  Agricultural  Works, 
232,  1862.  11  Fed.  Rep.  302,  1882. 

3  De  Witt  v.   Mfg.   Co.  5    Hun  «  Blackstone,  Book  2,  Ch.  12. 
(N.  Y.),  301,  1875. 


CHAPTEE  XII. 


LICENSES. 


296.  Licenses  defined  and  described. 

297.  Express  licenses  to  make,  with 
implied  leave  to  use,  or  implied 
leave  to  sell  the  things  made. 

298.  Express  licenses  to  use,  with 
implied  leave  to  make  for  use. 

299.  Express  licenses  to  sell,  with 
implied  leave  to  the  vendees  to 
use  and  to  sell  the  things  they 
purchase. 

300.  Licenses    to    make    and  use, 
without  implied  leave  to  sell. 

301.  Licenses  to  make  and  sell,  or 
to  use  and  sell,  with  implied 
leave  to  the  vendees  to  use  and 
to  sell  the  articles  they  buy. 

302.  Express  licenses  so  restricted 
as  not  to  convey  implied  rights. 


303.  Written  and  oral  licenses. 

304.  Recording  and  notice. 

305.  Licenses  given  by  one  of  sev- 
eral owners  in  common,  and  li- 
censes given  to  one  of  several 
joint  users. 

306.  Construction  of  licenses. 

307.  Warranty  and  eviction. 

308.  Clauses  of  forfeiture. 

309.  Effects  of  forfeiture. 

310.  Assignability  of  licenses. 

311.  Purely  implied  licenses. 

312.  Implied  licenses  from  conduct, 
and  first  by  acquiescence. 

313.  Implied  license  from  conduct 
by  estoppel. 

314.  Implied  license  from  actual  re- 
covery of  a  full  license  fee. 


§  296.  ANY  conveyance  of  a  right  under  a  patent,  which 
does  not  amount  to  an  assignment  or  to  a  grant,  is  a  license.1 
It  is  a  license,  if  it  does  not  convey  the  entire  and  unquali- 
fied monopoly,  or  an  undivided  interest  therein,  throughout 
the  particular  territory  to  which  it  refers.2  Consistently 
with  this  definition,  the  following  have  been  held  to  consti- 
tute licenses  only  :  an  exclusive  right  to  make  and  sell,  but 
not  to  use  :3  an  exclusive  right  to  make  and  use,  but  not  to 


1  Waterman  «.  Mackenzie,  138  U.      494,  1850;    Sanford   v.   Messer,    1 


S.  255,  1891;  Seibert  Oil  Cup  Co.  v. 
Lubricator  Co.  34  Fed.  Rep.  221, 
1888;  Hatfield  v.  Smith,  44  Fed. 
Rep.  355,  1890;  Rice  «.  Boss,  46 
Fed.  Rep.  195, 1891. 
2  Gayler  v.  Wilder,  10  Howard, 


Holmes,  149,  1872;  Hill    «.   Whit- 
comb,  1  Holmes,  321,  1874. 

3  Hayward  v.  Andrews,  106  U.  S. 
673,  1882;  Dorsey  Rake  Co.  ®.  Mfg. 
Co.  12  Blatch.  203,  1874 

250 


CHAP.  XII.]  LICENSES.  251 

sell ::  an  exclusive  right  to  use  and  sell,  but  not  to  make  :2 
an  exclusive  right  to  make,  to  use,  and  to  sell  to  be  used, 
for  certain  purposes,  but  for  no  other  :3  and  the  exclusive  con- 
veyance of  some,  but  not  all,  of  the  claims  of  a  patent.4  "  The 
right  to  manufacture,  the  right  to  sell,  and  the  right  to  use, 
are  each  substantive  rights,  and  may  be  granted  or  con- 
ferred separately  by  the  patentee."5  Any  one  or  two  of 
these  rights  may  be  expressly  conveyed  by  a  patentee,  while 
the  other  is  expressly  retained  by  him.  In  the  absence  of 
express  reservation,  however,  some  licenses  are  extended  by 
implication,  so  as  to  convey,  not  only  what  they  expressly 
cover,  but  also  some  other  right  which  is  necessary  to  the  full 
enjoyment  of  the  right  expressly  conveyed.  This  practice 
is  not  in  conflict  with  the  rule  which  prohibits  the  enlarge- 
ment of  an  instrument  in  writing  by  parol  evidence ;  because 
that  rule  is  directed  only  against  the  admission  of  oral 
evidence  of  the  language,  used  by  the  parties  in  a  contract 
which  was  reduced  to  writing.6  This  practice  relates  to 
the  legal  effect  of  the  language  actually  written,  and  is 
based  on  that  maxim  of  the  common  law  which  prescribes, 
that  any  one  granting  a  thing,  impliedly  grants  that,  without 
which,  the  thing  expressly  granted  would  be  useless  to  the 
grantee.7 

§  297.  An  express  license  to  make  specimens  of  a  patented 
thing,  is  without  value,  unless  it  implies  a  right  to  use,  or  a 
right  to  sell,  the  specimens  made  thereunder.  It  is  not  to 
be  presumed  that  a  right  so  nugatory  as  a  bare  right  to 
make,  was  the  only  subject  of  a  license  for  which  a  valuable 


1  Mitchell  v.  Hawley,  16  Wallace,  1894. 

544,   1872;  Rice  v.  Boss,  46  Fed.          4  Pope    Mfg.    Co.    v.    Gormully 

Rep.  195, 1891.  Mfg.  Co.  144  U.  S.  249,  1892. 

2  Hamilton    v.     Kingsbury,     17         5  Adams  v .  Burke,   17  Wallace, 
Blatch.   265,   1879;  Brush  Electric  456,  1873. 

Co.  v.  California  Electric  Light  Co.          6  Greenleaf  on  Evidence,  Section 

52  Fed.  Rep.  959,  1892.  277. 

3  Gamewell    Telegraph    Co.    v.          7  Steam  Stone  Cutter  Co.  v.  Short- 
Brooklyn,  14  Fed.  Rep.  255,  1882;  sleeves,  16  Blatch.  382,  1879;  Brush 
Jaros    Underwear    Co.  v.    Fleece  Electric  Co.  v.   California  Electric 
Underwear  Co.  60  Fed.  Rep.  623.  Light  Co.  52  Fed.  Rep.  960, 1892. 


252  LICENSES.  [CHAP.  xn. 

consideration  was  paid.  "Whether  the  implied  right,  which 
accompanies  such  a  license,  is  a  right  to  use  or  a  right  to 
sell,  can  best  be  determined  by  ascertaining  the  circum- 
stances which  surrounded  the  giving  of  the  particular  license 
in  question.  If  the  licensee  was  engaged  in  a  business 
which  made  it  convenient  for  him  to  use  the  thing  involved; 
then  the  right  to  use  will  be  implied  in  preference  to  the 
right  to  sell,  because  it  is  the  more  natural  implication  in 
such  a  case.  On  the  other  hand,  if  the  licensee  had  no 
occasion  to  use  the  thing  in  view,  but  was  engaged  in  mak- 
ing and  selling  similar  things,  for  the  use  of  others,  then  a 
right  to  sell  will  be  implied  from  a  right  to  make.1  Rights 
to  both  use  and  sell  will  not  be  implied  from  an  express 
license  'to  make,  because  only  one  of  those  rights  is  neces- 
sary to  the  beneficial  enjoyment  of  such  a  license.  An 
express  license  to  make  specimens  of  a  particular  thing,  does 
not  imply  a  license  to  use  a  particular  patented  machine 
for  that  purpose,  even  where  the  patent  on  that  machine 
was  owned  by  the  licensor,  at  the  time  of  the  license,  and 
even  where  that  machine  was  then  the  best-known  means 
of  making  the  thing  licensed.2 

§  298.  An  express  license  to  use  a  limited  or  unlimited 
number  of  specimens  of  a  patented  article,  implies  a  right 
to  make  those  specimens,  and  to  employ  others  to  make 
them,  and  will  protect  those  others  in  making  them  for  the 
use  of  the  licensee.3  If  the  license  to  use,  covers  a  greater 
length  of  time  than  one  specimen  of  the  thing  to  be  used 
will  last ;  then  there  is  an  implied  right  in  the  licensee  to 
repair  or  to  rebuild  that  specimen,  or  to  replace  it  by 
another  specimen  made  or  purchased  for  that  purpose.4 


1  Steam  Cutter  Co.  v.  Sheldon,  10  Signal  Co.  55  Fed.  Rep.  487,  1893. 
Blatch.  8,  1872.  «  Wilson  v.    Stolley,  4  McLean, 

2  Troy  Nail  Factory  v.  Corning,  14  275,1847;  Bicknell  v.  Todd,  5  Mc- 
Howard,  193,  1852.  .                            .  Lean,    236,   1851;    Woodworth    v. 

8  Steam  Stone  Cutter  Co.  v.  Short-  Curtis,  2  Woodbury  &  Minot,  524, 

sleeves,  16  Blatch.  381,  1879;  John-  1847;  Steam  Cutter  Co.  v.  Sheldon, 

son  Signal  Co.  v.  Union  Switch  &  10  Blatch.  8,  1872. 


CHAP.  XII.]  LICENSES.  253 

§  299.  An  express  license  to  sell  specimens  of  a  patented 
thing,  does  not  imply  any  right  to  make  those  specimens, 
if  it  can  be  presumed  that  they  may  be  obtained  by  purchase; 
because  no  person  requires  any  license  to  enable  him  to 
lawfully  buy  an  article  covered  by  any  patent.  But  a 
license  to  sell  does  imply  that  a  right  to  use  and  to  sell 
again  shall  be  conferred  on  the  vendees  of  the  licensee,  for 
otherwise  no  persons  would  buy  except  for  exportation,  and 
sales  for  exportation  are  seldom  sufficiently  practicable 
to  raise  a  presumption  that  they  alone  were  contemplated 
by  the  parties  to  a  license  to  sell. 

§  300.  A  license  to  make  and  use  does  not  authorize  any 
sale  of  the  thing  so  made,  nor  authorize  any  purchaser  of 
that  thing  to  use  the  same.1  Nor  does  a  sale,  coupled  with 
an  express  license  to  use,  give  any  right  to  use  after  the 
license  has  been  forfeited  or  has  expired.2  The  purchaser 
of  a  patented  thing  gets  no  other  right  to  use  it  than  such 
right  as  the  seller  had  an  express  or  an  implied  right  to 
convey.3  And  the  purchaser  of  a  thing  which  is  useful  only 
in  producing  a  patented  article,4  or  in  being  combined  with 
other  things  to  constitute  a  patented  article,5  or  when  used 
to  perform  a  patented  process,6  gets  thereby  no  right  to  use 
his  purchased  thing  for  such  a  purpose. 

§  301.  A  license  to  make  and  sell,  or  a  license  to  use  and 
sell,  implies  a  right  in  the  purchaser  to  use  and  to  sell 
again,  the  thing  thus  lawfully  sold  to  him.  When  a  speci- 
men of  a  patented  invention  is  sold  with  the  authority  of  the 
owner  of  the  patent  which  covers  it,  and  without  any  restric- 
tion on  the  ownership  or  use  of  the  thing  conveyed,  then 
that  specimen  passes  out  of  the  exclusive  right  which  is 

1  Wilson  v.  Stolley,  3  McLean,277,  1852;  Stevens  ®.  Gladding,  17  How- 
1847.  ard,  447,  1854;  Elgin  Wind  Power 

2  Wortendyke  v.  White,  2  Bann.  Co.  •».  Nichols,  65  Fed.  Rep.  220, 
&  Ard.  25,  1875;  Porter  Needle  Co.  1894. 

v.  National  Needle  Co.  17  Fed.  Rep.  5  Roosevelt  v.  Electric  Co.  20  Fed. 

536,  1883.  Rep.  724,  1884. 

3  Chambers  v.  Smith,  5  Fisher,  14  6  United  Nickel  Co.  v.  Electrical 
1870.  Works,  25  Fed.  Rep.  479, 1885. 

4  Stevens  v.  Cady,  14  Howard, 528, 


254  LICENSES.  [CHAP.  XII. 

secured  by  the  patent,  and  may  be  used  as  long,  or  sold  as 
often,  as  though  it  had  never  been  subject  to  a  patent.1  And 
a  restriction  is  not  operative,  upon  a  purchaser  of  the 
patented  thing,  who  has  no  notice  of  the  restriction.2 
The  same  results  also  follows  from  a  sheriff's  sale  of  a 
patented  article,  where  that  sale  was  made  in  pursuance  of 
an  execution,  issued  against  the  owner  of  the  patent  right, 
and  lawfully  levied  on  that  article,  as  the  property  of  that 
owner.3  But  no  person  acquiring  the  ownership  of 
mutilated  portions  of  a  specimen  of  a  patented  thing,  can 
lawfully  reconstruct  that  specimen  by  adding  the  missing 
parts;  and  still  less  can  he  lawfully  use  or  sell  the  entire 
article  when  reconstructed.4  Nor  can  a  purchaser  lawfully 
repair  his  purchased  machine,  by  replacing  parts  which  are 
patented  alone,5  or  which  are  the  main  elements  of  patented 
sub-combinations  ;6  but  a  purchaser  may  repair  a  patented 
machine  which  he  has  purchased,  by  replacing  worn  out 
unpatented  parts,  so  long  as  the  identity  of  the  machine  is  not 
destroyed.7 

§  302.  Express  licenses  which,  if  unrestricted,  would 
convey  implied  rights,  may  be  so  restricted  that  they  will 
not  have  that  effect.8  A  license  to  make  and  sell  may  be  so 
restricted  that  the  things  made  and  sold  under  it  cannot 
be  lawfully  used  in  certain  specified  parts  of  the  United 
States ;  or  so  restricted  that  the  licensee  cannot  make  and 

1  Morgan   Envelope    Co.  .«.    Al-      217,  1883. 

bany  Paper  Co.  152  U.  S.  432,  1894;          4  American  Cotton  Tie  Co.  ®. Sim- 
Bloomer  v.  McQuewan,  14    How-  mons,  106  U.  S.  89,  1882;    Davis 
ard,  539,  1852;    Chaffee  v.  Belting  Electrical  Works  v.  Edison  Electric 
Co.  22  Howard,  217,  1859;  Adams  Light  Co.  60  Fed.  Rep.  276,  1894. 
v.  Burke,  17  Wallace,  453, 1873;  Pa-         5  Morgan  Envelope  Co.  «.  Albany 
per-Bag  Cases,  105  U.  S.  771,  1881;  Paper  Co.  152  U.  8.  435,  1894. 
McKay  v.  Wooster,  2  Sawyer,  373,          6  Singer  Co.  v.  Foundry  Co.  34 
1873;  May  v.  Chaffee,  2  Dillon,  385,  Fed.  Rep,  394,  1888. 
1871;  Detweiler  v.  Voege,   8  Fed.          7  Young  v.  Foerster,  37  Fed.  Rep. 
Rep.  600,  1881;  Holiday  «.  Matthe-  203,  1889. 
son,  24  Fed.  Rep.  185,  1885.  8  Hamilton     v.     Kingsbury,     15 

2  Edison    Electric  Light  Co.   v.  Blatch.  64, 1878;  Hamilton  v.  Kings- 
Goelet,  65  Fed.  Rep.  614,  1894.  bury,  17  Blatch.  264,  1879. 

3  Wilder  v.  Kent,  15  Fed.  Rep. 


CHAP.  XII.]  LICENSES.  255 

sell  the  patented  thing  anywhere  in  the  United  States,  with 
intent  to  have  it  exported  to  a  foreign  country.1  A  license 
to  use  and  sell  may  likewise  be  restricted  in  the  same  way. 
A  license  to  make  and  use  may  be  so  restricted  that  the 
patented  thing  cannot  be  used  in  certain  specified  parts  of 
the  United  States,2  and  cannot  be  used  anywhere  in  the 
United  States,  during  certain  specified  spaces  of  time.3 

§  303.  Licenses  may  be  written,  or  they  may  be  oral.4 
The  former  have  advantages  over  the  latter,  because  they 
can  be  made  exclusive,  and  can  usually  be  -proved  with 
more  ease  and  more  certainty,  and  because  the  latter  may 
sometimes  be  invalid  because  obnoxious  to  some  statute  of 
frauds.  These  points  constitute  abundant  reasons  for  em- 
bodying all  such  contracts  in  plain  black  and  white  docu- 
ments, rather  than  committing  them  to  the  "slippery 
memory  of  man."  And  a  written  license,  which  purports 
to  be  exclusive,  will  operate  as  a  non-exclusive  license,  if  it 
was  given  by  one  who  had  authority  to  give  the  latter,  but 
not  the  former  kind  of  license.5  A  license  is  valid,  if  made 
before  the  patent  is  issued,  as  well  as  if  made  afterward ; 6 
and  a  contract  for  a  license  is  enforcible  as  a  license,  if  no 
formal  license  is  ever  given  in  pursuance  of  the  contract.7 

§  304.  No  license  is  required  to  be  recorded,8  and  no 
record  of  a  license  affects  the  rights  of  any  person  ;  for  a 
license  is  good  against  the  world,9  whether  it  is  recorded  or 
not,10  and  a  purchaser  of  a  patent  takes  it  subject  to  all 

1  Dorsey  Rake  Co.  v.  Mfg.  Co.  12  Electric  Light  Co.  52  Fed.  Rep.  963. 
Blatch.  204,  1874.  1892. 

2  Wicke  «.  Kleinknecht,  1  Bann.  7  American  Paper  Bag  Co,  v.  Van 
&  Ard.  608,  1874.  Nortwick,  52  Fed.  Rep.  752,  1892. 

a  Mitchell®.  Hawley,  16  Wallace,  8  Brooks  v.  Byam,  2  Story  525, 

544,  1872.  1843.  Consolidated  Fruit  Jar  Co.  t>. 

4  Jones  v.  Berger,  58  Fed.  Rep.  Whitney,  2  Bann.  &  Ard.  38,  1875; 
1007,   1893;  Union  Switch  &  Signal  Buss  v.  Putney,  38  N.  H.  44,  1859; 
Co.  v.  Johnson  Signal  Co.  61  Fed.  Jones  v.  Berger,  58  Fed.  Rep.  1007, 
Rep.  944,  1894.  1893. 

5  Union  Switch  and  Signal  Co.  v.  9  Chambers  v.  Smith.  5  Fisher,  14, 
Johnson  Signal  Co.  61  Fed.   Rep.  1870. 

943,  1894.  10Farrington0.  Gregory,  4  Fisher, 

6  Brush  Electric  Co.  ®.  California      221,  1870. 


256  LICENSES.  [CHAP.  XII. 

outstanding  licenses.1  So  also,  if  a  license  is  embodied  in 
two  papers,  one  of  which  limits  the  scope  of  the  other,  an 
assignee  of  the  broader  document  will  take  subject  to  the 
limitations  of  the  narrower,  even  if  he  had  no  notice  of  its 
provisions,  nor  even  of  its  existence.  Nor  will  the  fact  that 
the  broader  document  was  recorded,  and  the  narrower  one 
unrecorded,  alter  or  affect  the  operation  of  this  rule.2  It 
follows,  that  where  two  licenses  conflict,  the  first  must  pre- 
vail, even  though  the  taker  of  the  second  had  no  notice  of 
the  existence  of  the  first ;  and  it  also  follows  that  any 
license  will  prevail  as  against  the  claims  of  any  subsequent 
assignee  or  grantee  of  the  patent  right  involved.3 

§  305.  A  license  from  one  of  several  owners  in  common 
of  a  patent  right,  is  as  good  as  if  given  by  all  those  owners ; 4 
and  a  license  given  to  one  of  several  joint  makers  or  users 
of  a  patented  thing  is  as  good  as  if  given  to  all,  if  the 
licensor  gives  it  with  the  understanding  that  the  thing 
licensed  to  be  done  is  to  be  done  jointly,  or  is  to  be  done 
by  the  express  licensee  on  behalf  of  the  other  party.5 

§  306.  The  construction  of  a  license  in  writing  depends 
upon  the  same  general  rules  as  the  construction  of  other 
written  contracts.6  For  example,  it  is  to  be  construed  in 
the  light  of  the  circumstances  which  surrounded  its  execu- 
tion.7 Accordingly,  where  the  owner  of  several  patents 
licenses  a  person  to  make,  use  or  sell  a  particular  class  of 
things  which,  if  made,  used  or  sold  without  a  license,  would 
infringe  all  those  patents,  then  that  license  confers  a  right 
under  them  all.8  And  this  is  the  rule  even  where  the 
licensor's  title  accrued  to  him,  after  the  date  of  the  license.* 

1  Pratt  v.  Wilcox  Mfg.   Co.   64      603,  1869. 

Fed.  Rep.  592,  1893.  •  Wetherell  t>.  Zinc  Co.  6  Fisher, 

2  Hamilton    v.    Kingsbury,     17      50,  1872. 

Blatch.  264  and  460,  1880.  7  Burdell  v.  Denig,  92  U.  S.  722, 

3  Continental  Windmill  Co. «.  Em-      1875. 

pire  Windmill  Co.  8.  Blatch.  295,  8  Dey  v.  Stellman,  1  Fisher  487, 

1871.  1859. 

4  Dunham  v.  Railroad  Co.  7  Bis-  9  Pratt  v.   Wilcox  Mfg.   Co.  64 
sell,  224, 1876.  Fed.  Rep.  591,  1893. 

6  Bigelow  v.  Louisville,  3  Fisher. 


CHAP.  XII.]  LICENSES.  257 

§  307.  No  warranty  of  validity  of  the  letters  patent  is 
implied  in  any  license  given  thereunder,  and  unattended 
proof  of  invalidity  is  therefore  no  defence  to  any  suit  for 
promised  royalties.1  As  long  as  a  licensee  continues  to 
enjoy  the  benefit  of  the  exclusive  right,  he  must  pay  the 
royalty  which  he  promised  to  pay,  and  he  cannot  escape 
from  so  doing  by  offering  to  prove  the  patent  to  be  void.2 
And  the  licensee  must  pay  the  promised  royalty,  not  only 
on  the  exact  invention  claimed  in  the  patent,  but  also  on 
whatever  is  near  enough  like  that  invention  to  infringe  the 
patent.3  Nor  can  a  licensee  renounce  his  license  without 
the  consent,  acquiescence  or  fault  of  the  licensor;4  but  a 
false  representation  by  the  licensor  to  the  licensee,  of  the 
rate  of  the  royalty  paid  by  other  licensees,  is  such  a  fault 
as  will  entitle  the  licensee  to  renounce  his  license.5  A 
license  implies  that  the  licensee  shall  not  be  evicted  from  its 
enjoyment,  and  such  an  eviction  is  a  defence  to  a  suit  for 
royalties  accruing  after  it  occurred.6 

Such  an  eviction  occurs  whenever  the  patent  is  adjudged 
void  in  an  interference  suit  prosecuted  in  equity  in  pursu- 
ance of  Section  4618  of  the  Revised  Statutes,  or  whenever 
the  patent  is  repealed  by  the  decree  of  a  court  in  which  an 
action  is  brought  by  the  United  States  for  that  purpose.7 
Such  eviction  also  occurs  whenever  the  licensee  is  enjoined 
from  acting  under  it  at  the  suit  of  the  owner  of  a  senior 
patent  ;8  and,  by  parity  of  reasoning,  it  occurs  whenever  a 
judgment  or  decree  is  obtained  by  the  owner  of  a  senior 


i  Birdsall  v.  Perego,  5  Blatch  251,  *  St.  Paul  Plow  Works  v.  Starling, 

1865;  Sargent  v.  Larned,  2  Curtis,  140  U.  S.  195,  1891. 

340,  1855;  Marsh  «.  Dodge,  4  Hun  5  Hat-Sweat  Mfg.  Co.  v.  Waring 

(N.  Y.),  278, 1875;  Bartlett  v.  Hoi-  46  Fed.  Rep.  106,  1891;  Hat-Sweat 

brook,  1  Gray  (Mass.),   118,  1854;  Mfg.  Co.  v.  Porter,  46   Fed.  Rep. 

Mareton  c.  Sweet,  66  N.  Y.  207,  757,  1891. 

1876  ;    Pope  Mfg.    Co.  «.  Owsley,  8  White  «.  Lee,  14  Fed.  Rep.  791, 

27  Fed.  Rep.  105,  1886.  1882. 

a  Burr  v.  Duryee,  2  Fisher,  285,  7  McKay  v.  Smith,  39  Fed.  Rep. 

1862.  557,  1889. 

3  St.  Paul  Plow  Works  v.  Starling,  8  Pacific  Iron  Works  v.  Newhall, 

140  U.  S.  195,  1891.  34  Connecticut,  67,  1867. 


258  LICENSES.  [CHAP.  xn. 

patent,  against  the  licensee,  for  an  infringement  which  con- 
sisted of  acting  under  the  license,  but  not  when  such  a  suit 
is  merely  proposed  to  be  brought  by  the  owner  of  a  senior 
patent.1 

Such  an  eviction  will  also  probably  be  held  to  occur 
whenever  the  patent  is  defied  by  unlicensed  persons,  so 
extensively  and  so  successfully  as  to  deprive  the  licensee 
of  the  benefit  of  his  share  in  the  exclusive  right  which  it 
was  supposed  to  secure.  But  a  single  successful  defiance 
is  not  enough  to  constitute  such  an  eviction.2  Nor  does 
such  an  eviction  result  from  the  patentee  granting  later 
licenses  at  lower  rates.3 

§  308.  A  license  not  expressly  limited  in  duration,  con- 
tinues till  the  patent  expires  or  the  license  is  forfeited.4 
Forfeiture  of  a  license  does  not  follow  from  the  single  fact 
that  the  licensee  has  broken  some  covenant  which  was 
made  by  him  when  accepting  the  license ;  unless  the  par- 
ties expressly  agreed  that  such  a  forfeiture  should  follow 
such  a  breach.5  And  even  where  such  an  agreement  is 
made,  it  will  not  always  be  enforced.  For  example,  non- 
payment of  royalty  on  the  very  day  it  becomes  due,  will 
not  work  a  forfeiture,  if  that  non-payment  arose  from  lack 
of  certainty  relative  to  the  place  of  payment,  and  from 
lack  of  demand  from  the  licensor.6  Nor  will  forfeiture  of 
a  license  result  from  the  fact  that  the  licensee  has  infringed 
the  patent  by  doing  acts,  with  the  invention,  which  were 

1  American  Electric  Co.  v.  Consu-  «.  Wolf,  28  Fed.  Rep.  814,   1886; 
mers  Gas  Co.  47  Fed.  Rep.  43,  1891;  Densmore  «.  Tanite  Co.    32  Fed. 
Consumers  Gas  Co.  «.  Electric  Co.  Rep.  544,  1887;  Seibert  Oil  Cup  Co. 
50  Fed.  Rep.  778,  1892.  ®.  Lubricator  Co.  34  Fed.  Rep.  221 

2  Pope  Mfg.  Co.  v    Owsley,  27  1888;    Hammacher  v.   Wilson,    26 
Fed.  Rep.  108,  1886.  Fed.  Rep.  241, 1886;  Washburn  and 

3  McKay  v.  Smith,  39  Fed.  Rep.  Moen  Mfg.  Co.  v.  Wire  Fence  Co. 
557,  1889;  National  Rubber  Co.  v.  42  Fed.  Rep.  675,  1890;  Brush  Elec- 
Rubber  Shoe  Co.  41  Fed.  Rep.  48,  trie  Co.  v.  California  Electric  Light 
1890.  Co.  52  Fed.  Rep.  964,  1892;  Platt  v. 

*  St.  Paul  Plow  Works  v.  Starling,  Fire  Extinguisher  Mfg.  Co.  59  Fed. 

140  U.  S.  195,  1891.  Rep.  900,  1894. 

8  White  «.  Lee,  5  Bann.  &  Ard.  6  Dare  v.  Boylston,  6  Fed.  Rep. 

572, 1880;  Consolidated  Purifier  Co.  493,  1880 


CHAP.  XII.]  LICENSES.  259 

unauthorized  by  the  license.  The  license  will  not  protect 
him  in  such  doings,  but  it  will  continue  to  protect  him  in 
doing  the  acts  which  it  did  authorize.1  Indeed  forfeitures 
are  not  favored  by  the  law ;  and  courts  are  always  prompt 
to  seize  upon  any  circumstance  which  indicates  an  agree- 
ment or  an  election  to  waive  one;2  and  an  injunction  will  issue 
to  prevent  a  threatened  wrongful  declaration  of  forfeiture.3 
§  309.  Where  a  license  is  really  forfeited,  and  the- licensee 
continues  to  work  under  it  as  though  it  were  still  in  force, 
the  licensor  has  an  option  to  sue  him  as  an  infringer,  or  to 
sue  him  for  the  promised  royalties.4  If  he  selects  the  first 
of  these  remedies,  the  infringer  may  generally  interpose 
any  defence  that  he  could  have  set  up  in  the  absence  of  a 
license.5  If  there  is  an  exception  to  this  rule,  that  excep- 
tion exists  where  the  license  contained  an  agreement  on  the 
part  of  the  licensee  not  to  contest  the  validity  of  the  patent. 
Whether  or  not  there  is  such  an  exception  to  the  general 
rule,  has  never  yet  been  settled,  though  the  point  has  been 
raised  and  considered.6  The  question  seems  to  be  whether 
a  forfeited  contract  is  binding  upon  the  party  that  suffered 
the  forfeiture ;  and  if  so,  whether  a  party  can  make  a  valid 
contract  to  omit  a  legal  defence  when  brought  into  court  in 
response  to  the  suit  of  another  party.7  If  the  licensor 
selects  the  second  of  the  remedies  mentioned  in  this  section 
he  must  sue  at  law  and  not  in  equity.8 

1  Wood  v.  Wells,  6  Fisher  383,  160,  1850;  Burr  v.  Duryee,  2  Fisher, 
1873;  Steam  Cutter  Co.  v.  Sheldon, .  283,   1862,    Brown  v,   Lapham,   27 
10  Blatch,  1,  1872.  Fed  Rep.  77,  1886. 

2  Insurance  Co.  v.  Eggleston,  96  6  Wooster  v.  Mfg.  Co.  23  Off.  Gaz. 
U.  8.  572,  1877.  2513,  1883. 

3  Baker  Mfg.  Co.  v.  Washburn  &  7  Pope  Mfg.  Co.  v.  Gormully,  144 
Moen  Mfg.  Co.  18  Fed.  Rep.  172,  U.  S.  232,  1892. 

1883.  8  Consolidated    Purifier    Co.    ®. 

4  Woodworth  v.  Weed,  1  Blatch.  Wolf,  28  Fed,  Rep.  816,  1886;  Cran- 
166,   1846;  Cohn  «.  Rubber  Co.  3  dall  «.  Piano  Mfg.  Co.  24  Fed,  Rep. 
Bann.  &  Ard.  572,  1878;  Union  Mfg.  738,  1885;  Washburn  &  Moen  Mfg. 
Co.  v.  Lounsbury,  42  Barbour  (N.Y.)  Co.  0.  Freeman  Wire  Co.  41  Fed. 
125,  1864;  Starling  «.  Plow  Works.  Rep.  410,  1890;  Washburn  &  Moen 
32  Fed.  Rep.  290,  1887.  Mfg.  Co.  v.  Barbed  Wire  Co.  42  Fed. 

5  Woodworth  v.  Cook,  2  Blatch.  Rep.  675,  1890. 


260  LICENSES.  [CHAP.  XII. 

§  310.  No  license  is  assignable  by  the  licensee  to  another, 
unless  it  contains  words  which  show  that  it  was  intended 
to  be  assignable.1  The  most  suitable  phrase  with  which  to 
express  such  an  intention,  would  include  the  word  "  as- 
signs ;  "•  but  in  one  case  it  was  held  that  the  words  "  legal 
representatives "  would  answer  the  purpose,  because  the 
license  fairly  indicated  that  the  parties  understood  that 
phrase  to  include  "  assigns  "  as  well  as  "  executors  or  ad- 
ministrators."-2 But  even  unassignable  licenses  may  some- 
times be  invoked  by  persons  who  are  not  exactly  identical 
with  the  licensees.  A  railroad  company  which  was  formed 
by  the  consolidation  of  prior  railroad  companies,  may 
invoke  the  licenses  which  were  given  to  either  of  its  con- 
stituent corporations  ;  because  the  consolidated  company 
is  a  successor  rather  than  an  assignee  of  those  companies.3 
So  also,  a  license  to  a  corporation,  will  protect  a  receiver 
who  is  authorized  to  manage  its  business  during  its  embar- 
rassments.4 But  a  receiver  who  is  appointed  in  supplemen- 
tary proceedings,  under  the  New  York  Code  of  Civil 
Procedure,  to  settle  the  business  of  an  insolvent  individual, 
does  not  acquire  any  right  to  an  unassignable  license  which 
belonged  to  the  insolvent  person.5 

Where  a  license  is  given  to  a  partnership,  composed  of 
several  persons,  and  where  that  partnership  is  dissolved, 
and  its  business  is  continued  by  one  of  the  partners,  that 
partner  is  entitled  to  that  license  ;6  but  where  such  a  disso- 
lution ends  the  business  of  the  partnership,  the  license 


1   Troy  Factory  «.   Corning,    14  2    Hamilton    v.    Kingsbury,    15 

Howard,   193,  1852;  Rubber  Co.  v.  Blatch.  69,  1878. 

Goodyear,   9  Wallace,    788,    1869;  3  Lightner  v.  Railroad  Co.  1  Low- 

Hapgood  v.  Hewitt,  119  U.  S.  226,  ell,  338,  1869. 

1886;  Baldwin  v.  Sibley,  1  Clifford,  4  Emigh  v.  Chamberlin,  2  Fisher, 

150,  1858;  Searls  «.  Bouton,  12  Fed.  192,  1861. 

Rep.   143,   1882;    Bull  v.   Pratt,    1  5  Waterman  v.  Shipman,  55  Fed. 

Connecticut,    342,    1815;  Adams  v.  Rep.  985,  1893. 

Howard,  22  Fed.   Rep.  657,  1884;  «Beldingo.  Turner,  8  Blatch.  321, 

Waterman    v.   Shipman,    55    Fed.  1871. 
Rep.  986,  1893. 


CHAP.  XII.]  LICENSES.  261 

lapses  j1  except  that  a  receiver  appointed  to  wind  up  the 
partnership  affairs,  may  invoke  the  license  to  protect  him 
in  so  doing.8  But  a  license  to  one  person  gives  no  right  to 
any  partner  of  that  person,  or  to  any  corporation  organized 
by  the  licensee  ; 3  and  if  it  authorizes  the  licensee  to  act 
only  at  a  particular  place,  it  will  not  protect  any  of  his 
doings  elsewhere.4  And  no  license  to  a  man  and  any  part- 
ner he  may  take,  will  protect  any  assignee  of  that  man 
when  acting  alone.5  Nor  does  an  unassignable  license  pass 
to  an  executor  or  administrator  of  a  deceased  licensee.6 
The  non-assignability  of  a  license,  may  be  waived  by  the 
licensor,  and  will  be  so  waived  if  he  accepts  the  promised 
royalty  from  the  assignee  of  the  license  ;7  or  ratines  the 
transfer  of  the  license,  by  otherwise  treating  the  assignee 
as  the  licensee  was  entitled  to  be  treated.8 

Assignable  licenses  are  assignable  only  in  their  entirety; 
unless  they  expressly  or  impliedly  authorize  their  assign- 
ment in  parts,  and  to  a  plurality  of  persons.9  And  the 
royalties  payable  to  a  licensor  are  assignable  by  him ; 
and  the  assignee's  rights  to  those  royalties  follow  the 
license,  when  it  is  assigned  to  a  person  who  has  notice  of 
those  rights.10  The  purchaser  of  a  license  takes  it  subject 
to  all  the  restrictions  connected  therewith,  whether  he  has 
notice  of  those  restrictions  or  not  j11  and  subject  to  liability 
for  the  same  rate  of  royalty  for  his  doings,  that  the  licensee 


1  Haffcke  v.  Clark,  50  Fed.  Rep.  8  Hammond  v.  Organ  Co.  92  U.  S, 
531,  1892.  724,    1875;  Lane  &  Bodley  Co.  ®. 

2  Montrose  v.  Mabie,  30  Fed.  Rep.  Locke,  150  U.  S.  196,  1893. 

234,  1887.  9  Brooks  v.  Byarn,  2  Story,  545, 

3  Eclipse  Windmill  Co.  «.  Wind-  1843;  Consolidated  Fruit  Jar  Co.  v. 
mill  Co.  24  Fed.  Rep.  650,  1885.  Whitney,  I  Bann.  &  Ard.  356,  1874; 

4  Rubber  Co.  v.  Goodyear,  9  Wai-  Adams  v.   Howard,  22    Fed.  Rep. 
lace,  788,  1869.  656,   1884 ;    Brush  Electric  Co.  v. 

5  Gibbs  v.  Hoefner,  19  Fed.  Rep.  California   Electric    Light   Co.  52 
324,  1884.  Fed.  Rep.  964,  1892, 

8  Oliver  V.  Chemical  Works,  109  10  Grier  v.  Baynes,  46  Fed.  Rep. 

U  S.  81,  1883.  524,  1891. 

7  Bloomer  v.  Gilpin,  4  Fisher,  55,  u  Chambers  v.  Smith,  5  Fisher,  12, 

1859.  1870, 


262  LICENSES.  [CHAP.  xn. 

would  have  had  to  pay  for  similar  acts  j1  but  not  subject  to 
any  royalty,  or  other  money,  due  from  the  license  to  the 
licensor,  at  the  time  of  the  assignment  of  the  license.2 

§  311.  Purely  implied  licenses  may  arise  from  the  con- 
duct of  patentees  and  grantees  of  patents,  or  from  recov- 
eries by  them,  of  profits  or  damages  for  certain  classes  of 
infringements.  Many  of  the  rules  which  have  thus  far  in 
this  chapter,  been  stated  and  explained  in  connection  with 
purely  express  licenses,  and  in  connection  with  express 
licenses  having  implied  incidents,  are  also  applicable  to 
licenses  which  are  purely  implied.  Little  or  nothing  re- 
mains to  be  said  about  the  latter,  except  to  state  the  classes 
of  circumstances  out  of  which  they  are  found  to  spring. 

§  312.  Implied  licenses,  from  conduct  of  owners  of  patent 
rights,  may  arise  out  of  any  one  of  a  considerable  number 
of  classes  of  facts;  but,  when  analyzed,  those  facts  will 
probably  always  be  found  to  thus  operate  by  virtue  of  the 
doctrines  of  acquiescence,  or  the  doctrines  of  estoppel. 
Where  the  owner  of  a  patent  right  acquiesces  in  the  doings 
of  one  who  makes,  uses,  or  sells  specimens  of  the  patented 
invention,  and  where  that  owner  also  accepts  partial  com- 
pensation for  such  doings ;  a  license  will  be  implied  unless 
the  case  also  presents  other  facts  which  negative  such  an 
implication.3  Payment  of  full  compensation  would  be  a 
still  more  convincing  ground  upon  which  to  base  an  implied 
license ;  and  such  a  license  may  be  based  on  a  clear  case 
of  acquiescence,  even  if  no  payment  whatever  is  proved  to 
have  as  yet  been  actually  received.  But  acquiescence  in 
unpaid-for  use,  does  not  always  imply  that  no  compensa- 
tion is  to  be  expected.  Where  the  user  knew  of  the  patent, 
and  the  patentee  knew  of  the  use,  and  did  not  object  there- 
to ;  it  is  more  reasonable  to  imply  an  agreement  for  a 
quantum  meruit  or  a  royalty,  than  to  imply  that  the 

1  Paper  Stock  Co.  «.  Disinfecting  297,  1859;  Seibert  Oil  Cup  Co.  ». 

Co.  147  Mass.  323,  1888,  Lubricator  Co.  34  Fed.  Rep.  231, 

2 Goodyear®. Rubber  Co.  3  Blatch.  1888;  Keyes  fl.  Eureka  Mining  Co. 

449,  1856.  158  U.  S.  150,  1895. 

sfilanchard  v.  Sprague,    )   Cliff. 


CHAP.  XII.]  LICENSES.  263 

patentee  donated  the  use  of  his  invention  to  the  user,  or  to 
imply  that  the  user  unlawfully  seized  upon  the  invention  of 
the  patentee.1  But  where  the  patentee  was  specially  em- 
ployed by  the  user  to  develop  the  business  of  the  latter,  at 
the  time  the  former  made  the  invention  used  in  that 
business ;  the  law  implies  a  license  to  continue  that  use 
without  paying  royalty.2  In  no  case,  however,  can  a  license 
be  implied  from  acquiescence,  unless  the  licensor  had 
knowledge  of  the  thing  acquiesced  in  ;  nor  can  acquiescence 
be  predicated  even  of  knowledge  and  omission  to  interfere 
with  the  doings  of  the  infringer,  if  that  omission  is  fairly 
accounted  for  on  other  grounds. 

§  313.  The  estoppel  which  will  work  an  implied  license,  is 
that  sort  which  is  most  accurately  denominated  estoppel  by 
conduct ;  and  all  of  the  following  elements  are  necessary  to 
its  existence.  1.  There  must  have  been  a  representation  or 
a  concealment  of  material  facts.  2.  The  representation 
must  have  been  made  with  knowledge  of  the  facts.  3.  The 
party  to  whom  it  was  made  must  have  been  ignorant  of  the 
truth  of  the  matter.  4.  It  must  have  been  made  with  the 
intention  that  the  other  party  should  act  upon  it.  5.  The 
other  party  must  have  been  induced  to  act  upon  it.3  6. 
That  act  must  be  hurtful  to  the  party  acting,  in  case  the 
estoppel  is  not  enforced  in  his  favor.4 

If  the  owner  of  a  patent  right  were  to  explain  the  pat- 
ented invention  to  a  person  ignorant  of  the  patent ;  and 
were  to  advise  him  to  make,  to  use,  or  to  sell  a  specimen 

1  United  States  v  Palmer,  128  U.  483,  1886;  22  Court  of  Claims,  342, 
8.  269,  1888;  McKeever  t>.   United  1887;  Withington-Cooley  Mfg   Co. 
States,    23    Off.    Gaz.    1527,  1883;  «.  Kinney,  68  Fed.  Rep.  505,  1895. 
Drainage  Construction  Co.  v.  Chel-  3  M'Millin  v.  Barclay,  5  Fisher, 
sea,  41  Fed.  Rep.  47,  1890.  201,    1871  ;   Bigelow  on  Estoppel, 

2  Solomons  «.  United  States,  137  Ch.  18,  p.  437. 

U.  8.  346,  1890;  Lane  &  Bodley  Co.  *  Railroad  Co.    «.  Duboise,   12 

D.  Locke,  150  U.  8.  198,  1893;  Me-  Wallace,  64,  1870;  Hill  «.  Epley,  31 

Aleer   v.  United  States,  150  U.  8.  Penn.   State,  334,   1858;  Dezell  v. 

431,  1893;  Barry  v.  Mfg.  Co.  22  Fed.  Odell,   3  Hill  (N.  Y.),  215,   1842; 

Rep.  397,  1884;  Herman  «.  Herman,  Patterson  v.  Lyttle,  11  Penn.  State, 

29  Fed.  Rep.  94,  1886;  Solomons  v.  53,  1849. 
United  States,  21  Court  of  Claims, 


264  LICENSES.  [CHAP.  xn. 

^ « 
of  that  invention,  with  intent  to  induce  him  to  infringe  the 

patent  unknowingly ;  and  if  that  person  were  thereby 
induced  to  incur  expense  in  infringing  or  in  preparing  to 
infringe  that  patent ;  then  it  would  follow  from  these  doc- 
trines of  estoppel,  that  an  implied  license  would  result  to  a 
person  thus  misled.  The  same  result  would  follow,  if  the 
owner  of  a  patent  right  were  to  conceal  the  existence  of  the 
patent  from  a  person  who,  to  his  knowledge,  was  about  to 
infringe  it  unknowingly;  if  that  concealment  were  done 
with  intent  to  allow  that  person  to  infringe  ;  and  if  that 
person  incurred  expense  in  infringing  or  in  preparing  to 
infringe,  which  he  would  not  have  incurred  if  he  had  known 
of  the  patent.  So,  also,  where  a  person  sells  a  patented 
machine  to  another  without  having  any  interest  in  or  under 
the  patent,  he  will  be  estopped  from  prosecuting  his  vendee 
for  infringement  on  the  basis  of  any  after  acquired  title. 
And  where  a  person  sells  a  patent  which  employs  an  inven- 
tion which  infringes  a  prior  patent ;  the  person  selling  is 
estopped  from  bringing  an  action  against  his  grantee  for 
that  infringement ;  and  that  estoppel  operates  as  a  license, 
not  only  as  against  the  seller  but  also  as  against  owners  in 
common  with  him  of  the  prior  patent.1  And  where  an 
inventor  before  applying  for  a  patent  thereon,  sells  a  speci- 
men of  his  invention  to  a  manufacturer,  who  avowedly  buys 
it  to  copy  it,  by  making  other  specimens  for  sale,  and  where 
the  seller  gives  the  buyer  no  notice  of  intention  to  apply 
for  a  patent  on  that  invention ;  the  inventor  is  estopped 
from  bringing  an  action  on  such  a  patent  against  any  one, 
for  using  or  selling  a  specimen  of  the  invention  which  was 
made  by  the  purchaser  from  him.2 

§  314.  An  actual  recovery  of  a  full  license  fee  for  mak- 
ing, and  selling  to  others  to  be  used,  though  not  an  unsatis- 
fied judgment  or  decree  therefor,  operates  as  an  implied 
license  to  any  purchaser  of  the  thing  thus  made  and  sold, 
to  use  it  to  the  same  extent  that  he  could  lawfully  have 


1  Curran  «.  Burdsall,  20  Fed.  Rep.          2  Anderson  v.  Eiler,  50  Fed.  Rep. 
835,  1883.  775, 1892 


CHAP.  XII.]  LICENSES.  265 

done,  if  the  maker  had  been  licensed  to  make  and  sell  it.1 
But  where  the  money  recovered  in  an  infringement  suit  for 
unlicensed  making  and  selling  a  specimen  of  a  patented 
thing,  is  recovered  as  damages  for  such  making  and  selling 
alone ;  that  recovery  does  not  operate  as  an  implied  license 
authorizing  the  use  of  that  specimen.2  And  where  an 
action  in  equity,  against  an  infringing  user  of  a  patented 
thing,  is  brought  to  recover  the  profits  which  he  derived 
from  that  use ;  that  action  cannot  be  successfully  re- 
sisted on  the  ground  that  the  profits,  which  the  infringing 
maker,  or  an  infringing  seller  of  that  thing,  derived  from 
his  infringment,  have  already  been  recovered  from  him  ; 
because  each  infringer  is  liable,  in  equity,  for  his  own  pro- 
fits only  ; 3  and  because  the  payment  to  the  owner  of  a 
patent,  of  the  profits  which  one  infringer  has  reaped  from 
infringement,  cannot  operate  in  equity,  to  relieve  another 
infringer  from  liability  to  the  owner  of  the  patent  for  other 
profits  which  he  derived,  either  from  the  same  infringement 
or  from  a  different  infringement,  connected  or  disconnected 
therewith.  Therefore  the  existence  of  a  decree  for  profits 
against  a  manufacturer  for  making  and  selling  a  patented 
article,  does  not  constitute  any  defence  to  a  suit  for  infringe- 
ment brought  against  a  user  of  the  very  same  article.4  And 
no  action  of  a  patentee,  by  way  of  suit,  or  by  way  of  ami- 
cable collection  of  money  for  infringement  against  an 
infringing  maker  or  seller  of  a  patented  article,  can  deprive 


1  Spaulding  v.   Page,  1  Sawyer,  2  Birdsell  v.  Shaliol,  112  U.   S. 

709,  1871;  Gilbert  &  Barker  Mfg.  445,  1884;  Kelley  v.  Ypsilanti  Mfg. 

Co.  v.  Bussing,  12  Blatch.  426, 1885;  Co.   44  Fed.   Rep.  21  1890;    New 

Perrigo  v.   Spaulding,   13  Blatch.  York  Filter  Co.  v.  Schwarzwalder, 

391,  1876;  Steam  Stone  Cutter  Co.  58  Fed.  Rep.   579,   1893;  Philadel- 

v.  Mfg.   Co.   17  Blatch.   31,  1879;  phia  Trust  Co.  v.  Edison  Electric 

Booth  v.  Seevers,  19  Off.  Gaz.  1140,  Light  Co.  65  Fed.  Rep.  554, 1895. 

1881;  Stutz  v.  Armstrong,  25  Fed.  8  Elizabeth  ®.  Pavement  Co.  97 

Rep.  147,  1885;  Fisher  v.  Amador  U.  S.  140,  1877;  Tatham  v.  Lowber, 

Mine,  25  Fed.  Rep.  201,  1885;  Tut-  4  Blatch.  87,  1857;  Covert  «.  Sar- 

tle  0.  Matthews,  28  Fed.   Rep.  98,  gent,  38  Fed.  Rep.  238,  1889. 

1886;  American  Bell  Telephone  Co.  4  Tuttle  v.  Matthews,   28  Fed. 

«.  Albright,  32  Fed.  Rep.  287,  1887.  Rep.  98,  1886. 


266  LICENSES.  [CHAP.  xn. 

any  licensee  of  the  patentee,  who  has  the  exclusive  right  to 
use  the  patented  article  in  a  given  territory,  of  the  right  to 
collect  money  from  the  user  in  that  territory,  of  the  very 
infringing  article  which  was  involved  in  the  suit  or  settle- 
ment between  the  patentee  and  the  manufacturer  or  seller 
of  that  article.  Recoveries  based  on  unlicensed  use  of  a 
patented  process  or  thing,  are  necessarily  confined  to  such 
use  as  occurred  before  the  suit  was  brought,  if  the  action 
be  at  law,  or  to  such  as  occurred  before  the  final  decree,  if 
the  action  is  in  equity  ;  and  it  therefore  follows  that  no  such 
recovery  can  operate  to  license  any  one  to  continue  such 
use,  or  to  begin  a  new  use  of  that  thing  or  that  process.1 

1  Suffolk  Co.  i>.  Hayden,  3  Wall.  315.  1865. 


CHAPTER  XIII. 

INTERFERING  PATENTS. 


315.  Causes  and  characteristics  of 
interfering  patents. 

316.  Actions     in    equity  between 
interfering  patents. 

317.  The    proper    issues  in    such 
actions. 

318.  The  force  of  the  decision  of 


the  Commissioner  of  Patents 
on  a  prior  interference  in  the 
Patent  Office. 

319.  Injunctions    in      interference 
actions. 

320.  The  proper    decrees  in  such 
actions. 


§  315.  PATENTS  which  contain  one  or  more  claims  in  com- 
mon, are  interfering  patents.1  But  a  generic  claim,  and  a 
specific  claim,  the  first  of  which  secures  a  particular  pro- 
cess or  mechanism,  with  its  indispensable  characteristics, 
with  or  without  its  minor  features,  and  the  last  of  which 
secures  the  same  process  or  mechanism,  with  but  not  with- 
out its  minor  features,  are  not  co-extensive  claims,  and  there- 
fore do  not  interfere  with  each  other.2  All  but  one  of 
several  interfering  patents  are  necessarily  void,  as  to  the 
interfering  claim  or  claims ;  though  all  may  be  valid  as  to 
the  other  claims  which  they  respectively  contain.3  There 
are  two  causes  which  lead  to  the  granting  of  interfering 
claims.  Such  claims  may  be  granted  because  of  inadvert- 
ence or  erroneous  judgment  on  the  part  of  the  Patent 
Office ;  and  they  may  be  granted  because  applications  do 
not  always  happen  to  be  made  in  the  order  of  invention. 
The  first  cause  may  operate  when  the  Patent  Office  exam- 
iners overlook  an  anticipating  patent,  while  examining  an 
application  in  point  of  novelty  ;  or  when  they  form  an  erro- 


1  Nathan  Mfg.   Co.  «.  Craig,  49 
Fed.  Rep.   370,   1892;  Dederick  v. 
Fox,  56  Fed.  Rep.  717,  1893. 

2  Stonementz  Mach.  Co.  v.  Brown 


Mach.  Co.  57  Fed.  Rep.  605,  1893. 
3  Gold  and  Silver  Ore  Co.  v.  Dis- 
integrating Ore  Co.  6  Blatch.   311, 
1869. 

267 


268  INTERFERING   PATENTS.  [CHAP.    XIII. 

neous  opinion  that  an  existing  patented  claim  is  substantially 
different  from  the  claim  under  immediate  inspection.  The 
second  cause  may  operate  when  one  person  who  is  an  origi- 
nal, but  not  the  first,  inventor  of  a  particular  thing,  applies 
for  and  receives  a  patent  thereon,  before  another  person, 
who  is  an  original  and  the  first  inventor  of  that  thing,  files 
his  application  in  the  Patent  Office.  Under  such  circum- 
stances, it  is  the  duty  of  the  Commissioner  to  declare  an 
interference  between  the  patent,  and  the  unpatented  appli- 
cation, and  if,  in  that  interference  proceeding,  the  latter 
applicant  is  adjudged  to  be  the  prior  inventor,  and  if  the 
application  is  otherwise  unobjectionable,  it  becomes  the 
duty  of  the  Commissioner  to  grant  him  a  patent.1  The  Com- 
missioner has  however  no  authority  to  recall  the  patent 
theretofore  granted  to  the  wrong  party.  That  patent  can 
be  set  aside  by  the  courts  alone. 

§  316.  A  suit  in  equity  is  the  prescribed  proceeding  by 
means  of  which  the  interfering  claims  of  two  or  more 
patents  may  be  adjudicated  upon,  in  point  of  comparative 
novelty  ."  Such  an  action  may  be  joined  with  an  action  for 
infringement,3  where  the  complainant's  patent  was  issued 
first.  But  where  the  defendant's  patent  was  issued  first,  an 
action  for  infringement  of  the  complainant's  patent  by  the 
defendant,  cannot  be  joined  witfe  such  an  interference 
action.4  And  where  such  a  suit  in  equity  is  brought  with- 
out joining  an  action  for  infringement  therewith;  a  cross 
bill,  based  on  alleged  infringement  by  the  complainant  of 
the  defendant's  patent,  is  not  proper.5  Nor  is  a  cross  bill 
proper,  which  seeks  to  institute  an  interference  action, 
in  response  to  an  action  for  infringement  alone.6  The 


1  Revised  Statutes,  Section  4904;  hardt,  29  Fed.  Rep.  853,  1887. 
Hubel  v.  Dick,  28  Fed.   Rep.    139,  4  American    Roll-Paper    Co.    v. 
1886.  Knopp,  44  Fed.  Rep.  611, 1891. 

2  Revised  Statutes,  Section  4918.  6  Stonemetz  Mach.  Co.  v.  Brown- 

3  Leach «.  Chandler,  18  Fed.  Rep.  Mach.  Co.  46  Fe'd.  Rep.  851,  1891. 
262,  1883;  Swift  v.  Jenks,  29  Fed.  6  New  Departure  Bell  Co.  v.  Hard- 
Rep.   642,   1887;  Holliday  v.  Pick-  ware  Co.  62  Fed.  Rep.  462,  1894. 


CHAP.    XIII.]  INTERFERING   PATENTS.  269 

complainant  in  an  interference  suit  may  be  the  patentee  or 
assignee  of  either  of  the  interfering  patents,  or  a  grantee  or 
licensee  thereunder;  for  all  these  persons  fall  within  the 
category  mentioned  in  the  statute ;  a  category  which 
includes  every  person  interested  in  any  one  of  the  patents, 
or  in  the  working  of  the  invention  claimed  under  any  of 
them.  The  defendant  may  be  any  patentee,  assignee  or 
grantee  who  owns  an  interest  in  another  of  the  interfering 
patents ;  for  all  such  persons  are  "  owners "  thereof.  It 
is  neither  necessary  that  all  the  possible  complainants 
should  join  in  a  suit,  nor  that  all  the  possible  defendants 
should  be  brought  before  the  court.  The  statute  provides 
that  no  decree  entered  in  such  a  suit,  shall  affect  either  pat- 
ent, except  so  far  as  the  patent  affected  is  owned  by  parties 
to  the  suit,  or  by  persons  deriving  title  under  them  after 
the  rendition  of  such  decree.  The  proper  practice  is 
to  make  all  persons  complainants  who  have  a  right,  and 
who  are  willing,  to  be  so  made  ;  and  to  make  all  persons 
defendants  who  are  liable  to  be  made  so,  and  who  are 
inhabitants  of  the  district  where  the  suit  is  brought,  or 
who  shall  be  found  in  that  district.1 

A  bill  cannot  be  filed  in  an  interference  suit  until  the 
complainant's  patent  is  actually  granted;2  and  until  the 
defendant's  patent  is  actually  granted  there  is  no  occasion 
for  such  a  bill.  No  cross-bill  is  either  necessary  or  proper 
in  a  suit  of  this  kind,  because  the  statute  provides  that  in 
such  a  suit  the  court  may  adjudge  either  of  the  patents  to 
be  void.  The  defendant  may  therefore  obtain  all  rightful 
affirmative  relief  without  becoming  himself  a  complainant 
in  a  cross-bill.3  And  the  defendant's  right  to  such  relief 
prevents  the  complainant  from  dismissing  his  bill  without 
the  defendant's  consent.4 


1 18  Statutes  at  Large,  Part  3,  3  Lockwood  t>.  Cleveland,  6  Fed. 

Ch.   187,    Sec.    1,    p.   470.      In  re  Rep.  721,  1884. 

Hohorst,  150  U.  S.  661, 1893.  *  Electric    Accumulator    Co.    v. 

2  Hoeltge  v.  Hoeller,  2  Bond,  388,  Brush  Electric  Co.  44  Fed.  Rep. 

1870.  606,  1890. 


270  INTERFERING   PATENTS.  [CHAP.    XIII. 

§  317.  There  may  be  an  issue  of  law  in  an  interference 
suit  depending  upon  the  construction  of  the  various  letters 
patent  involved  therein,  and  consisting  of  the  question  of 
the  presence  or  absence  of  interference  between  them ;  and 
such  an  issue  when  it  arises  in  such  a  suit,  may  be  decided 
on  a  demurrer.1  There  is  but  one  issue  of  fact  in  an  inter- 
ference suit.  That  issue  relates  to  the  dates  wherein  the 
interfering  matter  was  respectively  invented  by  the  interfer- 
ing inventors.  If  the  complainant's  invention  is  the  older, 
the  defendant's  interfering  claim  is  void  for  want  of  novelty.* 
And  the  complainant's  interfering  claim  is  void  for  want  of 
novelty,  if  the  defendant's  invention  is  found  to  antedate 
the  other.3  Evidence  that  a  third  person  anticipated  both 
inventors  is  not  admissible  in  an  interference  suit ;  because 
such  evidence  is  not  relevant  to  any  decree  the  court  has 
jurisdiction  to  make  in  such  a  case.  Such  evidence,  if  acted 
upon,  would  result  in  a  decree  voiding  both  patents.  The 
statute  authorizes  a  decree  voiding  either  patent,  but  author- 
izes none  voiding  both.  A  decree  voiding  one  is  not  a 
decree  impliedly  validating  the  other.  Such  a  decree  leaves 
the  successful  patent  open  to  every  possible  objection  save 
want  of  novelty;  and  leaves  it  open  to  every  possible  objec- 
tion of  want  of  novelty,  save  such  as  might  otherwise  have 
been  based  on  the  existence  of  the  unsuccessful  patent ;  and 
leaves  it  open  also  to  that  objection,  as  between  all  persons, 
except  the  parties  to  the  interference  suit  and  their  privies. 
If  a  defendant  in  an  interference  suit  could  attack  the  com- 
plainant's patent  on  the  ground  that  a  third  person  antici- 
pated the  complainant's  invention,  he  could,  with  equal 
propriety,  attack  it  on  any  or  all  of  the  numerous  other 
grounds  upon  which  patents  may  be  attacked  in  point  of 
validity.  To  suppose  that  the  statute  of  interference  suits 
authorizes  any  such  extended  litigation,  is  apparently  to 


1  Morris  ®.  Mfg.  Co.  20  Fed.  Rep.  3  National  Cash  Register  Co.  «. 
121,  1884  Lamson  Store  Service  Co.  60  Fed. 

2  Pacific  Cable  Ry.  Co.  v.  Butte  Rep.  603,  1894 
City  Ry.  Co.  52  Fed.  Rep.  865, 1892. 


CHAP.   XIII.]  INTERFERING   PATENTS.  271 

misapprehend  its  purpose  and  misconstrue  its  language.1 

§  318.  The  evidence  upon  which  interference  suits  are 
decided,  consists  of  the  best  evidence  on  the  question  in 
issue.  On  this  question  the  Commissioner's  decision  is 
prima  facie  evidence  in  favor  of  the  patent  last  granted ; 
because  he  would  not  have  granted  it  if  he  had  not  decided 
it  to  be  entitled  to  priority  in  point  of  date  of  invention.2 
The  Commissioner's  decision  is  weighty,3  but  is  not  conclu- 
sive ;  because,  if  it  were,  the  court  would  have  no  function 
but  to  enforce  that  decision ;  and  because,  if  it  were  con- 
clusive in  law,  it  would  bind  nobody  but  the  senior  patentee. 
In  such  a  case  the  operation  of  a  decree  based  on  a  Com- 
missioner's decision,  if  wrong  in  fact,  would  be  to  deprive 
a  patentee  of  all  right  to  make,  use  or  sell  the  thing  which 
he  was  the  first  to  invent  and  the  first  to  patent ;  and  to 
throw  that  invention  open  to  the  residue  of  the  world.4 

The  law  of  evidence,  if  applicable  to  depositions  taken  in 
a  Patent  Office  interference,  would  make  those  depositions 
admissible  in  a  subsequent  interference  suit  between  the 
same  parties  on  the  same  question  of  priority.5  But  Judge 
SHIRAS  has  held  that  such  depositions  are  not  thus  admis- 
sible, where  there  is  no  insuperable  obstacle  to  retaking  the 
testimony  of  the  deponents.6 

§  319.  Injunctions  are  not  expressly  authorized  by  the 
statute  which  provides  for  interference  suits.  Justice 
NELSON  once  decided  that  a  preliminary  injunction  could  be 
granted  in  such  a  case,  on  the  ground  that  "  the  power  con- 
ferred upon  the  Circuit  Court  to  entertain  bills  in  equity, 

1  Pentlarge  v.  Pentlarge,  19  Fed.  1882;  Chicopee  Folding  Box  Co.  v. 
Rep.  817, 1884;  Lockwood  v.  Cleve-  Rogers,  32  Fed.  Rep.  695,  1887. 
land,  20  Fed.  Rep.  164,  1884;  Amer-  3  Appleton  «.  Ecaubert,  62  Fed. 
lean  Clay  Bird  Co.  ®.  Clay  Pigeon  Rep.  747,  1894. 

Co.  31  Fed.  Rep.  467,  1887;  Nathan  4  Union  Paper  Bag  Machine  Co. 

Mfg.  Co.  v.  Craig,  47  Fed.  Rep.  522,  v.  Crane,  1  Holmes,  429,  1874. 

1891.  5  1  Greenleaf  on  Evidence,  Sec- 

2  Pacific  Cable  Ry.  Co.  t>.  Butte  tion  553. 

City  Ry.   Co.   52  Fed.   Rep.   865,          •  Clow  v.  Baker,  36  Fed.   Rep. 
1892;  Wire  Book  Sewing  Machine      692,  1888. 
Co.  v.  Stevenson,  11  Fed.  Rep.  155, 


272  INTERFERING   PATENTS.  [CHAP.    XIII. 

in  controversies  arising  under  the  Patent  Act,  is  a  general 
equity  power,  and  carries  with  it  all  the  incidents  belonging 
to  that  species  of  jurisdiction." 1  Justice  BLATCHFORD  was 
of  counsel  for  defendant  in  that  case,  and  was  its  reporter ; 
but  when  he  came  to  the  bench  he  declined  to  follow  the 
precedent,  saying:  "I  am  not  aware  of  any  principle  which 
would  authorize  the  Coiirt,  in  a  suit  of  this  character,  to 
restrain  a  defendant  from  bringing  suits  on  his  patent 
before  that  patent  is  adjudged  to  be  invalid."2  Of  course 
Justice  BLATCHFORD  was  aware  of  what  Justice  NELSON  had 
decided.  He  must  therefore  have  held  that  the  reason 
Justice  NELSON  gave  was  not  a  good  one,  unless  there  is  a 
substantial  difference  between  the  forms  of  injunction  asked 
for  in  the  two  cases.  The  injunction  prayed  before  Justice 
NELSON  was  that  the  defendant  be  restrained  from  using  or 
selling  his  interfering  patent ;  and  the  injunction  prayed  in 
the  other  case  was  that  the  defendant  be  restrained  from 
bringing  suits  upon  his  interfering  patent.  In  both  cases 
the  thing  sought  to  be  enjoined  was  an  attempted  enjoy- 
ment of  the  patented  right.  The  two  decisions  seem  there- 
fore to  be  in  conflict,  and  the  law  upon  the  point  cannot  be 
said  to  be  settled. 

§  320.  The  hearing  of  an  interference  case  may  disclose 
that  there  is  no  interference  between  the  patents  before  the 
court ;  or  that  there  is  such  an  interference.  In  the  former 
event,  the  proper  decree  to  enter  is  one  dismissing  the  com- 
plainant's bill ;  and  in  the  latter  event,  the  proper  decree  is 
one  adjudging  the  patent  issued  on  the  later  of  the  inven- 
tions to  be  void,  so  far  as  it  secures  the  interfering  matter, 
and  so  far  as  the  title  of  the  parties  to  the  suit  extends.3 
Such  a  decree  should  be  entered  regardless  of  whether  the 
patent  to  be  voided  is  that  of  the  defendant  or  that  of  the 
complainant.  If  it  is  the  latter,  a  decree  merely  dismissing 
the  complainant's  bill  will  not  answer  the  purpose ;  because 

1  Potter  «.  Dixon,  5  Blatch.  165,       1876. 

1863.  3  Gilmore  «.  Golay,  3  Fisher,  522, 

2  Asbestos  Felting  Co.  v.  Sala-      1869;     Sturges   v.  Van    Hagan,   6 
mander  Felting  Co.  13  Blatch.  454,      Fisher,  572,  1873. 


CHAP.  XIII.]  INTERFERING   PATENTS.  273 

such  a  decree  does  not  necessarily  involve  any  such  con- 
clusion.1 It  may  mean  only  that  there  is  no  interference ; 
or  it  may  merely  mean  that  the  complainant  has  no  proper 
title  to  the  patent  which  he  invokes. 

1  Tyler  v.  Hyde,  2  Blatch.  310,  1851. 


CHAPTER  XIV. 

REPEAL  OF  PATENTS. 


321.  Patents  obtained  by  fraud,  or 
granted  by  mistake. 

322.  Jurisdiction  of  equity  to  repeal 


patents    so    obtained    or    so 
granted. 
323.  Practice  in  such  cases. 


§  321.  PATENTS  and  reissues  may  sometimes  be  obtained 
by  fraud;  and  sometimes  be  granted  by  mistake.  The  facts 
which  constitute  the  fraud,  or  which  make  the  granting  a 
mistaken  one,  may  generally  be  interposed  as  one  of  the 
defences  to  an  infringement  suit ;  but  where  those  facts  are 
such  that  no  one  of  those  defences  can  be  based  upon  them, 
they  cannot  be  interposed  merely  because  they  constitute  a 
fraud,1  or  constitute  a  mistake.2  Nor  can  any  individual 
bring  any  action  to  repeal  or  otherwise  set  aside  a  patent, 
on  any  ground  of  fraud  ;  or  indeed  on  any  ground  whatever, 
except  that  of  an  interference.3  Where  frauds  are  ingenious 
enough  to  keep  clear  of  all  known  defences  to  infringement 
suits,  the  wrongs  which  they  cause  are  without  a  remedy, 
unless  the  United  States  Courts  will  repeal  a  patent  which 
United  States  officers  have"  fraudulently  been  induced  to 
grant,  or  to  reissue.  So  also,  where  a  patent  is  granted  by 
mistake,  instead  of  being  refused,  as  it  ought ;  and  where 
the  ground  of  refusal  does  not  constitute  ground  of  defence 
to  a  suit  for  infringement ;  the  wrongs  which  such  a  mistake 
will  occasion  must  be  remedied  by  a  repeal  of  the  patent,  or 
they  are  remediless. 

§  322.  Equity  has  jurisdiction  to  repeal  letters  patent  for 
inventions  where  they  were  obtained  by  fraud,  whenever 


1  Railroad  Co.  v.  Dubois,  12  Wal- 
lace, 64, 1870. 

2  Doughty  v.  West,  6  Blatch,  433, 


1869. 

3  Mowry  v.  Whitney,  14  Wallace, 
439,  1871. 

274 


CHAP.  XIV.]         REPEAL  OF  PATENTS.  275 

the  United  States  files  a  bill  stating  the  facts  and  praying 
that  the  letters  may  be  annulled.1  And  the  same  jurisdic- 
tion exists,  where  such  letters  patent  are  issued  by  any  such 
mistake  as  those  for  which  courts  of  equity  grant  relief, 
except  so  far  as  the  peculiar  provisions  of  the  patent 
statutes  may  limit  the  general  rule  ;  but  this  jurisdiction  to 
repeal  letters  patent,  which  may  be  claimed  to  have  been 
issued  by  mistake,  does  not  extend  to  error  of  judgment  in 
deciding  any  debatable  question  of  difference  of  invention.8 
§  323.  A  bill  to  repeal  a  patent  must  be  filed  by  the  United 
States  ;3  acting  through  the  United  States  district  attorney 
of  the  district  wherein  it  is  filed  ;4  and  he  acts  under  the  direc- 
tion of  the  Attorney  General  of  the  United  States  ;5  and  it 
must  be  filed  in  the  Circuit  Court  of  the  United  States  for 
that  district  ;6  and  be  filed  before  the  expiration  of  the 
patent  which  it  seeks  to  repeal.7  No  citizen  has  any  power 
to  compel  the  United  States  or  the  district  attorney  'to  file 
such  a  bill ;  or  to  control  its  prosecution  after  such  a  bill  is 
filed.8  The  mere  pendency  of  a  bill  to  repeal  a  patent,  will 
not  affect  the  progress  of  an  infringement  suit  based  on  that 
patent  ;9  and  no  injunction  will  issue  to  restrain  a  patentee 
from  bringing  infringement  suits,  pending  a  bill  in  equity  to 
repeal  the  patent  upon  which  he  proposes  to  bring  them.10 

1  United  States  v.  Bell  Telephone      p.  9. 

Co.  128  U.  S.  373,  1888.   .  7  Bourne  «.  Goodyear,  9  Wallace, 

2  Bell  Telephone  Co.  «.   United      811,  1869. 

States,  68  Fed.  Rep.  565,  1895.  8  New  York  &  Baltimore  Coffee 

3  Mowry  v.  Whitney,  14  Wallace,      Polishing  Co.  v.  New  York  Coffee 
440,  1871.  Polishing  Co.  9  Fed.  Rep.  580, 1881. 

*  Attorney  General  v.  Rumford  9  American  Bell  Telephone  Co. «. 

Chemical  Works,  2  Bann.  &  Ard.  National  Telephone  Co.  27  Fed. 

308,  1876.  Rep.  666,  1886. 

6  United  States  v.  Bell  Telephone  10  United  States  0.Colgate,21  Fed. 

Co.  128  U.  S.  350,  1888.  Rep.  318,  1884. 

6  Revised  Statutes,   Section  629, 


CHAPTEE  XV. 


QUI  TAM  ACTIONS. 


329.  The  amount  of  the  recovera- 
ble penalty. 

330.  The  parties  in  qui  tarn  patent 
cases. 

331.  The  forum  for  qui  tarn  patent 
actions. 

332.  The  form  of  the  suit,  and  the 
requisites  of  a  declaration,  in 
such  an  action. 

333.  Injunctions    to    restrain   the 
commission     of     wrongs     of 
either  of  the  first  two  classes. 

334.  Appeals  in  qui  tarn  patent  cases. 


324.  Qui  tarn  actions,  defined  and 
described  as  they  exist  in  the 
patent  laws. 

325.  The    wrongs    which    are    the 
foundations  of  such  actions. 

326.  The  first  two  of   those  three 
classes  of  wrongs. 

327.  The  third  of  those  three  classes 
of  wrongs. 

328.  Wrongs   of   either  class    are 
completed  when  the  articles 
are  illegally  marked,  without 
any  subsequent  using  or  sell- 
ing. 

§  324.  THESE  are  certain  actions  at  law,  which  derive 
their  name  from  the  Latin  words  qui  tarn,  used  at  the 
beginning  of  the  declaration  in  such  an  action,  in  times  when 
all  declarations  were  written  in  the  Latin  language.  No 
such  action  was  known  to  the  common  law  of  England;  but 
several  actions  of  the  kind  have  long  been  prescribed  by 
statute,  in  that  country,  and  in  this.  Qui  tain  actions  rele- 
vant to  patents  are  authorized  by  Section  4901  of  the 
Revised  Statutes.  That  statute  forbids  certain  classes  of 
acts ;  and  provides  that  whoever  commits  an  act  of  either  of 
those  classes,  shall  be  liable  to  a  penalty  of  not  less  than 
one  hundred  dollars,  with  costs ;  and  that  any  person  may 
sue  for  that  penalty,  in  any  District  Court  of  the  United 
States  within  whose  jurisdiction  the  offence  was  committed; 
and  that  one  half  of  the  penalty,  when  recovered,  shall  go 
to  the  plaintiff,  and  the  other  half  to  the  United  States. 

§325.  The  forbidden  acts  are:  1.  Unauthorized  marking, 
upon  any  patented  article,  of  the  name,  or  any  imitation 
of  the  name,  of  the  patentee.  2.  Unauthorized  marking, 

276 


CHAP.  XV.]  QUI   TAM   ACTIONS.  277 

upon  any  patented  article,  of  the  word  "  patent "  or 
"  patentee,"  or  the  words  "  letters  patent,"  or  any  word  of 
like  import,  with  intent  to  imitate  or  counterfeit  the  mark 
or  device  of  the  patentee.  3.  Marking  upon  any  unpatented 
article  the  word  "patent,"  or  any  word  importing  that  the 
same  is  patented,  for  the  purpose  of  deceiving  the  public. 

§  326.  The  first  two  of  these  three  classes  of  acts  are 
injurious  to  the  public,  and  to  the  patentees.  They  are 
injurious  to  the  public  in  that  they  are  adapted  to  mislead 
persons  into  buying  and  using  articles  which  were  made 
and  sold  in  violation  of  patents,  and  which  therefore  can 
not  be  lawfully  used  even  by  innocent  purchasers.  The 
law  provides  that  those  who  have  a  right  to  make  and  sell 
patented  articles  shall  mark  those  articles  with  the  word 
"  patented  ;'n  and  that  other  persons  shall  not  so  mark  such 
articles.2  When  buying  anything  which  is  not  so  marked, 
a  purchaser  properly  concludes  that  it  is  not  patented,  and 
that  he  may  therefore  use  it  without  risk  of  a  suit  for 
infringement ;  and  when  buying  anything  that  is  so  marked, 
the  purchaser  concludes,  with  equal  propriety,  that  it  was 
made  and  sold  by  the  patentee  or  some  one  lawfully  author- 
ized by  him,  and  that  therefore  it  may  be  lawfully  used  to 
any  extent  desired.  It  is  clear,  that  on  these  accounts,  the 
first  two  of  the  forbidden  acts  are  detrimental  to  public 
security,  and  therefore  opposed  to-  public  policy.  The 
same  acts  are  also  injurious  to  patentees,  and  they  will  be 
considered  in  that  aspect  in  a  subsequent  section.  But  the 
second  of  the  forbidden  acts  is  not  committed  by  marking 
the  word  "  patented  "  upon  a  case  containing  patented  arti- 
cles of  such  a  character  that  they  could  have  been  thus 
marked.3 

§  327.  The  last  of  the  three  forbidden  classes  of  acts  is 
injurious  to  the  public,  in  that  it  is  adapted  to  mislead  per- 
sons into  an  opinion  that  they  have  no  right  to  make  and 
use,  or  make  and  sell,  other  specimens  of  the  thing  marked 


1  Revised  Statutes,  Section  4900.          8  Smith  v.  Walton,  51  Fed.  Rep. 

2  Revised  Statutes,  Section  4901.      17,  1892;  56  Fed.  Rep.  499,  1893. 


278  QUI   TAM   ACTIONS.  [CHAP.    XV. 

as  being  patented.  When  an  unpatented  thing  is  so  marked, 
it  is  immaterial  whether  it  is  a  patentable  thing  or  not.1 
This  point  is  so  clear  that  it  would  not  be  thought  to 
require  or  admit  elaboration,  had  not  a  judge  in  one  case 
expressed  a  contrary  opinion.2  Whether  a  thing  is  patent- 
able  or  not  depends  on  considerations  of  which  the  public 
as  a  whole  are  necessarily  ignorant.  They  may  therefore 
be  deceived  by  seeing  the  word  "  patented  "  upon  anunpat- 
entable  unpatented  article,  as  readily  as  by  seeing  the  same 
word  upon  'a  patentable  unpatented  article.  That  word 
warns  them  not  to  copy  that  article.  They  are  as  reluctant 
to  disregard  that  warning  on  a  supposition  that  the  article 
is  not  patentable,  as  they  are  on  the  hypothesis  that  it  is 
not  patented ;  and  they  are  as  effectually  diverted  from 
exercising  their  right  to  copy  it  in  the  one  case  as  in  the 
other. 

Intent  to  deceive  the  public  is  a  necessary  element  of  the 
forbidden  act  now  under  consideration  ;  and  that  intent 
must  exist  at  the  time  of  the  marking  ;3  and  it  does  not 
exist  when  the  person  marking,  is  himself  mistaken  relevant 
to  his  right  so  to  mark  ;4  or  where  the  word  "  patented  "  is 
accompanied  by  other  words  or  characters  which  indicate 
that  the  article  was  once  the  subject  of  a  patent,  but  that 
the  patent  has  expired  at  the  time  of  the  marking.5  Inas- 
much as  all  persons  are  presumed  to  intend  the  natural 
consequences  of  their  acts,  proof  of  an  act  which  was 
adapted  to  deceive  the  public,  is  sufficient  proof  of  the 
intent  to  deceive,  unless  the  doer  establishes  his  innocence 
of  that  intent.  The  burden  of  proof  therefore  lies  upon  the 
defendant,  in  this  particular.6  That  burden  can  be  carried 


1  Oliphant    v.     Salem    Flouring  4  Walker  «.  Hawxhurst,  5  Blatch. 
Mills  Co.   5     Sawyer,    128,    1878;  494,    1867;      Russell     ®.     Newark 
Winne  v.   Snow,  19  Fed.  Rep.  509,  Machine  Co.  55  Fed.  Rep.  300,  1893. 
1844.  5  Wilson  v.  Mfg.  Co.  12  Fed.  Rep. 

2  United  States  «.  Morris,  2  Bond,  57,  1882. 

27,  1866.  6  Brig  Struggle  e.  United  States, 

3  Hotchkiss  v.  Wooden  Ware  Co.  9  Cranch,  74, 1815. 
53  Fed.  Rep.  1018,  1891. 


CHAP.  XV.]  QUI  TAM   ACTIONS.  279 

by  showing  that  the  person  marking,  honestly  believed  that 
the  thing  marked  was  really  patented  by  a  particular  patent; 
but  it  cannot  be  carried  by  showing  that  the  person  mark- 
ing did  not  know  whether  the  article  marked  was  patented 
or  not ;  and  the  question  whether  a  particular  thing 
marked  patented  is  really  patented  by  a  particular  patent, 
is  a  question  of  construction  for  the  Court.1  Where  the 
defendant  is  a  corporation,  the  intent  to  deceive  the  public 
may  be  that  of  an  officer  or  agent,  who  acted  within  the 
scope  of  his  authority,  in  causing  the  marked  article  to  be 
made  and  prepared  for  sale.2  The  forbidden  act  treated  in 
this  section,  is  not  committed  by  marking  upon  a  patented 
article  the  number  and  date  of  a  patent  which  does  not 
cover  it,  where  it  is  also  marked  with  the  number  and  date 
of  a  patent  which  does  cover  it.3 

§  328.  Proof  that  the  article  illegally  marked  patented 
was  afterward  sold,  or  was  otherwise  presented  to  the  notice 
of  the  public,  is  not  a  necessary  element  in  either  of  the 
acts  which  are  forbidden  by  the  statute ;  but  proof  that  the 
intent  to  deceive  the  public  existed  when  the  marking  was 
done  is  such  an  element.  Accordingly,  if  a  person  illegally 
marks  an  article,  his  offence  is  complete,  and  is  not  con- 
doned by  a  subsequent  omission  to  profit  by  that  offence ; 
but  where  a  person  marks  an  article  without  any  intent  to 
deceive,  and  afterward  uses  the  article  so  marked  for  pur- 
poses of  deception,  he  does  not  violate  the  statute.4  Where 
a  person  illegally  marks  an  article  in  one  judicial  district 
of  the  United  States,  and  offers  it  for  sale  in  another,  he 
violates  the  statute  in  the  former  district  but  not  in  the 
latter.5 

§  329.  The  penalty  prescribed  by  the  statute  for  either  of 
the  forbidden  acts  is  "  not  less  than  one  hundred  dollars ; " 


1  Tompkins  v.  Butterfield,  25  Fed.  3  Russell  v,  Newark  Machine  Co. 
Eep.  556,  1885.  55  Fed.  Rep.  300, 1893. 

2  Tompkins   v.     Butterfield,     25  *  Nichols   v.   Newell,   1    Fisher, 
Fed.  Rep.  559,   1885;  Hotchkiss  v.  647,  1853. 

Wooden  Ware  Co.   53  Fed.  Rep.  5  Pentlarge-0.  Kirby,  19  Fed.  Rep. 

1018,  1891.  504,  1884. 


280  QUI  TAM   ACTIONS.  [CHAP.  XV. 

and  Justice  CURTIS  well  decided  that  such  language  must, 
in  a  penal  statute  like  this,  be  strictly  construed,  and  that, 
when  so  construed,  it  authorizes  a  penalty  of  precisely  one 
hundred  dollars  and  no  more.1  And  Judge  THAYER  in- 
structed a  jury  that  where  several  unpatented  articles  are 
marked  "patented"  on  the  same  day,  and  at  the  same  time, 
so  that  the  act  of  marking  is  practically  continuous,  but  one 
offence  is  committed  under  the  statute,  and  only  a  single 
penalty  is  recoverable  for  all  the  articles  thus  marked.2 

§  330.  The  plaintiff  in  a  qui  tarn  action  for  illegally  mark- 
ing a  patented  or  unpatented  article  may  be  any  "  person,"3 
whether  he  was  injured  by  the  doings  of  the  defendant  or 
not.4  It  was  decided  under  a  similar  statute  relevant  to 
copyrights,  that  a  plurality  of  persons  could  not  join  as 
plaintiffs  in  an  action  of  the  kind.5  The  language  of  that 
copyright  statute  was  identical  with  that  of  the  present 
patent  statute  in  this  particular ;  and  the  same  good  reason- 
ing which  carried  the  court  to  its  conclusion  in  the  copyright 
case,  will  probably  carry  any  court  to  the  same  conclusion 
in  any  qui  tain  action  under  the  patent  statute.  The  person 
who  sues  must  be  a  natural  and  not  an  artificial  person ; 
and  he  must  sue  in  his  own  name  and  not  in  that  of  the 
United  States,6  though  it  is  not  improper  for  him  to  state 
that  he  sues  for  the  United  States,  as  well  as  for  himself.7 

The  defendant  may  be  the  particular  natural  person  who 
did  the  marking  complained  of.  The  death  of  the  defend- 
ant will  end  a  qui  tarn  patent  case,  and  will  terminate  the 
right  of  action  on  which  it  is  based.8 

§  331.  Jurisdiction  in  qui  tarn  actions,  unlike  that  in  other 
kinds  of  patent  suits,  is  conferred  upon  District  Courts,  not 


1  Simpson  v.  Pond,  2  Curtis,  502,  1846. 

1855.  6  United  States  v.  Morris,  2  Bond 

2  Hotchkiss  t>.  Wooden  Ware  Co.  27,  1866. 

53  Fed.  Rep.  1021,  1891.  7  Winne  v.  Snow,  19  Fed.  Rep. 

3  Revised  Statutes,  Section  4901.  508,  1884. 

4  Winne  0.  Snow,  19  Fed.  Rep.  8  Schreiber  v.  Sharpless,  17  Fed. 
508,  1884.  Rep.  589,  1883. 

5  Ferrett  v.  Atwill,  1  Blatch.  153, 


CHAP.  XV.]  QUI   TAM   ACTIONS.  281 

upon  Circuit  Courts,  of  the  United  States,  and  is  conferred 
upon  the  particular  court  within  the  district  of  which  the 
forbidden  act  was  committed.1 

§  332.  The  proper  form  of  common  law  action  in  qui  tarn 
cases  is  that  of  debt.2  Inasmuch,  however,  as  no  particular 
form  is  prescribed  by  the  Federal  statute,  the  code  forms 
of  complaints  or  petitions  are  to  be  used  in  code  States.3 
The  declaration,  complaint,  or  petition,  as  the  case  may  be, 
ought  to  state  all  the  elements  of  the  forbidden  act  upon 
which  it  is  based ; 4  and  to  charge  that  the  act  was  contrary 
to  the  form  of  the  statute  in  such  cases  made  and  provided.5 
It  is  not  enough  to  charge  that  the  act  was  contrary  to  the 
law  in  such  cases  made  and  provided,6  but  to  aver  it  to 
have'  been  contrary  to  the  form  of  the  statutes  in  such  cases 
made  and  provided,  though  inartistic,  is  not  fatal.7  It  is 
not  necessary  to  aver  the  uses  to  which  the  penalty,  when 
recovered,  is  to  be  applied.8  A  declaration,  complaint  or 
petition  in  a  qui  tarn  patent  case,  is  tested  in  point  of  suffi- 
ciency by  the  rules  applicable  to  civil  actions  in  the  State 
in  which  the  District  Court  is  established,  when  that  suffi- 
ciency is  drawn  in  question  in  that  court.9 

.§  333.  The  first  two  of  the  classes  of  acts  forbidden  by 
Section  4901  of  the  Revised  Statutes  are  not  only  injurious 
to  the  public,  in  the  manner  already  explained,  but  they 
are  also  injurious  to  the  rightful  patentees.  Such  acts 
enable  inf ringers  to  increase  the  amount  of  their  infringe- 
ments, by  inducing  the  public  to  believe  that  the  articles 
they  sell  were  lawfully  made,  and  may  be  lawfully  sold  and 

1  Revised  Statutes,  Section  4901;          6  Sears  v.  United  States,  1  Galli- 
Winne  v.  Snow,  19  Fed.  Rep.  509,       son,  259,  1812. 

1884;  Pentlarge  «.  Kirby,  19  Fed.  6  Smith  v.  United  States,  1  Gam- 
Rep.  505,  1884.  son,  264,  1812. 

2  Stimpson  v.  Pond,  2  Curtis.  505,  7  Kenrick  «.  United  States,  1  Gal- 
1855;    Jacob  t>.   United    States,   1  lison,  273,  1812. 
Brockenbrough,  520,  1821.  »  Sears  «.  United  States,  1  Galli- 

3  Revised  Statutes,  Sections  721,  son,  259,  1812. 

914.  9  Fish  v.  Manning,  31  Fed.  Rep. 

4  Ferrett  v.  Atwill,  1  Blatch.  155,      340,  1887. 
1846. 


282  QUI   TAM   ACTIONS.  [CHAP.  XV. 

used.  So  also,  such  acts  may  enable  infringers  to  palm  off 
on  the  public  an  inferior  article,  the  using  of  which  will 
disappoint  the  purchaser,  and  thus  operate  to  injure  the 
reputation  of  the  genuine  thing.  For  these  reasons,  it  has 
been  held  that  a  person  who  is  guilty  of  an  act  of  either  of 
the  first  two  classes  may  be  restrained  by  an  injunction 
from  any  repetition  of  such  an  act.1 

§  334.  A  writ  of  error  lies  to  the  Circuit  Court  of  Appeals 
for  the  circuit  from  the  final  judgment  of  a  District  Court 
in  a  qui  tarn  patent  case ;  but  no  such  writ  of  error  lies 
from  a  Circuit  Court  of  Appeals  to  the  Supreme  Court  of 
the  United  States ;  though  such  a  case  may  go  to  the  latter 
tribunal  upon  a  certificate  from  the  former,  or  upon  a  cer- 
tiorari  from  the  Supreme  Court.2 

1  Washburn  &  Moen  Mfg.  Co.  v.  2  26  Statutes  at  Large,  Chap.  517, 
Haish,  4  Barm.  &  Ard.  571,  1879.  Sec.  6. 


CHAPTEE  XVI. 

INFRINGEMENT. 


335.  Infringement  of  process  pat- 
ents, illustrated  by  the  case  of 
Tilghman  v.  Proctor. 

336.  Illustrated  by  the  case  of  Mow- 
ry  v.  Whitney. 

337.  Illustrated    by   the    case    of 
Cochrane  t>.  Deener. 

338.  Equivalents  in  processes  and 
additions  thereto. 

339.  Infringement   of    patents  for 
machines  or  manufactures. 

340.  Comparative  results. 

3ll.  The  test  of  comparative  modes 
of  operation.  • 

34'2.  Comparative  modes  of  opera- 
tion as  illustrated  by  the  case 
of  the  Cawood  patent. 

343.  As  illustrated  by  the  Driven- 
Well  cases. 

344.  As  illustrated  by  Blanchard's 
patent    for  turning    irregular 
forms. 

345.  As    illustrated   by    Hayden's 
Brass-Kettle  machine. 

346.  As  illustrated  by  the  case  of 
Burr  t>.  Duryee. 

346a.  As  illustrated  by  The  Electric 
Signal  case. 

347.  Addition. 

348.  Transposition  of  parts. 

349.  Omission. 

350.  Substitution  of  equivalents. 

352.  The  test  of  sameness  of  func- 
tion, of  equivalents. 

353.  The  test  of  substantial  same- 
ness of  way  of  performance. 

354.  Question  of  the  necessity  of 
age  in  equivalents. 

359.   Primary  and  secondary  inven- 


tions in  respect  of  the  doc- 
trine of  equivalents. 


362. 


365. 


366. 


Review  of  the  matters  consid- 
ered in  Section  359. 

363.  Changes  of  form  considered  in 
respect  of    questions    of    in- 
fringement. 

364.  Subject    of    the  last    section 
illustrated    by    the    case    of 
Strobridge  v.  Lindsay. 
Illustrated  by  the  case  of  Ives 
®.  Hamilton. 

Illustrated    by  the    case    of 

Morey  v.  Lockwood. 
367.   Illustrated  by  the  case  of  the 

American  Diamond  Rock  Bor- 

ing Co.  v.  The   Sullivan  Ma- 

chine Co. 

Illustrated    by    the    case    of 

Elizabeth  •».  Pavement  Co. 

Infringement  of    patents    for 

compositions  of  matter. 

Substitution  of  ingredients. 
371.   Substitution  of  ingredients  as 

illustrated  by  the  Giant-Pow- 

der cases. 

Disclaimers      of      particular 

equivalents. 

Changes  of  the  proportion  in 

compositions  of  matter. 

The  various  classes  of  com- 

positions of  matter. 

Infringements  of  patents  for 

designs. 

376.  Comparative  utility  not  a  cri- 
terion of  infringement. 

377.  Knowledge  of  a  patent  not  a 
necessary  element  in  its  in- 
fringement. 

283 


368. 


369. 


370. 


372. 


373. 


374. 


375. 


284  INFRINGEMENT.  [CHAP.   XVI. 

§  335.  A  PATENT  for  a  process  is  infringed  by  him,  who, 
without  ownership  or  license,  uses  substantially  the  process 
which  the  patent  claims ;  whether  or  not  he  uses  substan- 
tially the  apparatus  which  the  patent  describes,1  and  whether 
he  uses  the  materials  prescribed  by  the  patent,  or  uses  equiv- 
alents therefor.2  Infringement  of  a  process  patent  may 
occur  even  where  precise  identity  does  not  exist  in  respect 
of  the  process  claimed  by  the  patent,  and  that  used  by  the 
infringer.  In  the  leading  case  just  cited,  the  apparatus 
used  by  the  infringer  was  totally  unlike  that  described  by 
the  patent ;  and  the  process  used  by  the  infringer  differed 
from  the  patented  process  in  several  particulars.  The 
claim  of  the  patent  was :  "  The  manufacturing  of  fat  acids 
and  glycerine  from  fatty  bodies  by  the  action  of  water  at  a 
high  temperature  and  pressure."  The  description  of  the 
process  which  was  contained  in  the  specification  of  the 
patent,  stated  that  the  water  should  be  mixed  with  the  fatty 
body  in  the  proportion  of  two  or  three  parts  of  fat  to  one 
of  water ;  and  that  the  mixture  should  be  heated  to  about 
612°  Fahrenheit ;  and  should  be  subjected  to  a  pressure 
sufficient  to  prevent  the  heat  from  converting  the  water  into 
steam. 

The  infringer  mixed  from  four  to  seven  per  cent,  of  lime 
with  the  water  and  the  fat ;  and  heated  the  mixture  to  only 
about  310°  Fahrenheit;  and  subjected  it  to  a  pressure  cor- 
respondingly lower  than  what  would  have  been  necessary 
to  prevent  the  conversion  of  the  water  into  steam,  if  he  had 
used  the  higher  degree  of  heat.  So  also,  he  heated  his 
mixture  by  means  of  superheated  steam  introduced  into 
the  vessel  containing  it,  instead  of  applying  heat  to  the  out- 
side of  the  vessel ;  and  he  maintained  the  intimacy  of  the 
mixture  by  continuously  pumping  the  water  from  the  bottom 
to  the  top  of  the  mingled  mass,  instead  of  continuously 
forcing  the  mixture  through  a  coil  of  tubes.  Notwithstand- 
ing all  these  differences,  the  Supreme  Court  held  the 

1  Tilghman  v.  Proctor,  102  U.  S.  2  Schwarzwalder  «.  Filter  Co.  66 
730,  1880.  Fed.  Rep.  158,  1895. 


CHAP.    XVI.]  INFRINGEMENT.  285 

defendant's  process  to  substantially  include  that  of  the  pat- 
ent, and  therefore  to  be  an  infringement  of  the  latter.  This 
holding  was  not  inconsistent  with  the  opinion  that  the  addi- 
tion of  the  lime  to  the  mixture,  was  a  useful  addition  to  the 
patented  process,  nor  with  the  possibility  that  the  defend- 
ant's method  of  maintaining  the  intimacy  of  the  mixture, 
was  superior  to  that  of  the  patent,  nor  with  the  probability 
that  the  heating  by  the  introduction  of  superheated  steam, 
was  more  perfect  than  by  conducting  the  heat  into  the  mix- 
ture through  the  walls  of  the  inclosing  vessel,  nor  with  the 
fact  that  the  lower  degree  of  heat  and  of  pressure  used  by 
the  defendant  was  more  safe,  and  perhaps  more  economical, 
than  the  higher  degree  of  each,  which  was  suggested  in  the 
patent. 

§  336.  Similar  circumstances  characterized  the  question 
of  infringement  in  the  case  of  Mowry  v.  Whitney.1  The 
patent  in  that  case  covered  a  process,  which  consists  in 
taking  cast  iron  car-wheels  from  their  moulds  as  soon  as 
they  become  solid  enough  to  retain  their  shape  ;  and  in  im- 
mediately placing  the  wheels  in  a  furnace  or  chamber, 
previously  heated  to  about  the  temperature  of  the  wheels 
when  taken  from  the  moulds ;  and  in  thereupon  reheating 
those  wheels  ;  and  then  in  causing  them  to  finally  cool  with 
a  great  degree  of  slowness. 

The  infringer's  process  consisted  in  taking  the  wheels  red 
hot  from  the  moulds ;  and  in  thereupon  putting  them  in  an 
unheated  chamber,  interlaying  them  with  charcoal,  and 
covering  the  whole  with  a  perforated  metal  plate ;  and  in 
then  causing  the  charcoal  to  burn  so  as  to  reheat  the 
wheels  to  a  somewhat  indefinitely  high  temperature  ;  and 
in  so  adjusting  the  draft,  as  to  make  the  charcoal  burn  out 
and  the  wheels  to  consequently  cool  down,  with  a  great 
degree  of  slowness.  The  Supreme  Court  found  all  of  the 
steps  of  the  complainant's  process  in  the  defendant's  doings, 
though  confessedly  the  reheating  was  done  by  different 


Mowry  v.  Whitney,  14  Wallace^  620,  1871. 


286  JNFBINGEMENT.  [CHAP.   XVI. 

means,  and  the  slow  cooling  regulated  on  different  princi- 
ples, from  those  which  caused  and  controlled  the  corres- 
ponding parts  of  the  complainant's  process. 

§  337.  The  case  of  Cochrane  v.  Deener l  involved  the 
infringement  of  a  patent  for  a  process  of  winnowing 
impurities  out  of  ground  wheat,  while  the  flour  is  being 
separated  from  the  other  parts  of  the  meal  by  means  of 
fine  cloth  sieves,  commonly  called  "  bolts."  The  patent 
described  a  suitable  apparatus  by  means  of  which  to  prac- 
tice this  process.  It  consisted  of  a  series  of  cylindrical 
sieves,  covered  with  cloth  of  progressively  finer  meshes, 
and  having  within  them  a  series  of  air  pipes,  so  disposed 
that  when  the  ground  wheat  was  in  the  sieves,  and  the 
sieves  were  revolving,  air  blasts  were  blown  from  the  ends 
of  those  pipes,  into  and  among  the  particles  of  ground 
wheat.  Those  air  blasts  operated  to  blow  the  impurities 
through  the  opening  in  the  top  of  the  bolting  chamber, 
at  the  same  time  that  the  revolutions  of  the  sieves  operated 
to  separate  the  flour  from  the  middlings.  The  result  of  the 
whole  operation  was  to  separate  the  ground  wheat  into 
three  sorts  of  matter,  and  to  place  those  three  sorts  in 
three  different  receptacles. 

The  defendant  accomplished  the  same  result,  by  winnow- 
ing the  impurities  out  of  the  ground  wheat,  while  the  flour 
was  being  separated  from  the  other  parts  of  the  meal  by 
means  of  fine  cloth  sieves.  But  the  defendant's  sieves  were 
flat,  and  the  air  blasts  were  blown  through  those  sieves 
from  below  and  reached  the  impurities  through  the  cloth, 
instead  of  reaching  them  from  the  ends  of  pipes  located  on 
the  same  side  of  the  cloth,  as  that  occupied  by  the  ground 
wheat.  The  Supreme  Court,  however,  held  that  process  to 
infringe  the  complainant's  patent,  notwithstanding  these 
differences. 

§  338.  No  process  patent  is  infringed  where  any  one  of 
the  series  of  acts  which  constitute  the  process  is  omitted 


Cochrane  «.  Deener,  94   U.  S.  787,  1876. 


CHAP.   XVI.]  INFRINGEMENT.  287 

by  the  supposed  infringer,  unless  some  equivalent  act  is 
substituted  for  the  one  omitted.1  Precisely  what  consti- 
tutes equivalency,  as  between  acts,  has  never  been  decided 
or  stated  by  the  Supreme  Court.  Reason  seems  to  indicate 
that  one  act  is  the  equivalent  of  another  when  it  works  in 
substantially  the  same  way  to  accomplish  the  same  result. 
Accordingly,  it  has.  been  held  that  tamping  oil  wells  with 
benzine,  is  equivalent  to  tamping  them  with  water  in  respect 
of  the  series  of  acts  which  constitute  the  process  covered 
by  the  Eoberts  torpedo  patent.2  An  addition  to  a  patented 
process  does  not  avert  infringement,  even  where  the  addi- 
tion is  an  improvement  3 

§  339.  Machines  and  manufactures  may  well  be  treated 
together  in  respect  of  infringement,  because  no  exact 
line  can  be  drawn  between  them,  and  because  the  same 
rules  of  infringement  are  applicable  to  both  those 
classes  of  tangible  things.  A  patent  for  a  machine  or 
manufacture  is  infringed  by  him  who,  without  ownership 
or  license,  makes,  or  uses,  or  sells  any  specimen  of  the 
thing  covered  by  any  claim  of  that  patent.  It  is  not  an 
infringement  of  a  patent,  to  make,  use,  or  sell  any  specimen 
of  any  invention  described  but  not  claimed  therein ;  4 
because  a  patent  covers  only  what  it  claims.  But  who- 
ever infringes  any  one  claim  of  a  patent  infringes  the 


1  Royer  v.  Coupe,  146  U.  8.   531,  Habermann  Mfg.  Co.  53  Fed.  Rep. 

1892;  Dittmar  v.  Rix,  1  Fed.  Rep.  380,   1892;  Tuttle  v.  Matthews,  28 

342, 1880:  Hammerschlag  t>.Garrett,  Fed.   Rep.   98,   1886;     New    York 

10  Fed.  Rep.  479,  1882;  Cotter  v.  Filter  Co.    v.    Schwarzwalder    58 

Copper  Co.  13  Fed.  Rep.  234,  1882;  Fed.  Rep.  579,  1893;  Edison  Elec- 

Arnold  v.  Phelps,  20  Fed.  Rep.  315,  trie  Light  Co.  v.  Philadelphia  Trust 

1884;  Brush  Electric  Co.   v.  Julien  Co.  60  Fed.  Rep.  398,  1894. 

Electric  Co.  41  Fed.  Rep.  679, 1890;  *  Howe  v.  Williams,  2  Cliff.  262, 

Brush  Electric  Co.  «.  Accumulator  1863;  Waterbury  Brass  Co.  fl.Miller, 

Co.  47  Fed.   Rep.  49,  1891.  9  Blatch.  93, 1871;  Toohey  v.  Hard- 

8  Roberts  v.  Roter,  5  Fisher,  296,  ing,  4  Hughes,  253,1880;  Bufflngton's 

1872.  Iron  Building  Co.  v.  Eustis,  65  Fed. 

3  Lalance  &  Grosjean  Mfg.  Co.  v.  Rep.  807, 1895. 


288  INFRINGEMENT.  [CHAP.    XVI. 

patent,  whether  or  not  it  contains  other  claims  which  he 
does  not  infringe.1 

Whether  a  particular  thing  made  or  used  or  sold  by  a 
particular  person,  infringes  a  particular  claim  of  a  par- 
ticular patent,  is  always  a  question  of  fact.  In  some  cases 
that  question  can  readily  be  decided  by  the  application  of 
one  rule  of  law,  and  sometimes  by  the  application  of  another, 
and  sometimes  it  can  be  decided  only  by  the  judicial 
sagacity  of  the  tribunal  before  which  the  question  is  tried. 
Such  relevant  rules  of  law  as  are  well  established,  will  now 
be  stated,  and,  as  far  as  necessary,  will  be  illustrated  by 
describing  the  leading  cases  which  embody  them. 

§  340.  The  respective  results  of  a  machine  or  manufac- 
ture covered  by  the  claim  of  a  patent,  and  of  a  machine  or 
manufacture  alleged  to  infringe  that  claim,  do  not  furnish  a 
criterion  by  which  to  decide  the  question  of  infringement. 
Those  results  may  be  identical,  while  the  things  which  pro- 
duce them  are  substantially  different.  Any  person  may 
accomplish  the  result  performed  by  a  patented  thing  with- 
out infringing  the  patent,  if  he  uses  means  substantially 
different  from  those  of  the  patent.2  To  hold  the  contrary 
of  this  rule  would  be  to  retard,  and  not  to  promote  the 
progress  of  the  useful  arts.3  So  also,  on  the  other  hand, 
the  result  of  an  alleged  infringing  machine  or  manufacture 
may  be  entirely  different  from  the  result  described  in  the 
patent  without  causing  that  machine  or  manufacture  to 
escape  the  charge  of  infringement,  even  when  that  charge  is 
based  on  unlicensed  using.  This  rule  results  from  the  well- 
established  point  of  law  that  it  is  an  infringement  of  a 


1  Moody  v.  Fiske,  2  Mason,  115,  die,  1  Woods,  153, 1871;  McComb®. 

1820;  Wyeth  v.  Stone,  1  Story,  273,  Ernest,  1  Woods,  195,  1871. 

1840;    Pitts    v.  Whitman,  2  Story,  a  O'Reilly  v.  Morse,  15  Howard, 

609, 1843;  Colt  t>.  Arms  Co.  1  Fisher,  62,  1853;  Steam  Gauge  &  Lantern 

108,  1851;  Pitts 0.  Wemple,  2  Fisher  Co.  v.  Mfg.  Co.  29  Fed.  Rep.  447, 

10  1855;  Foss  «.  Herbert,  1  Bissell,  1886. 

121, 1856;  Morris  v.  Barrett,  1  Bond,  3  Smith  v.  Downing  1  Fisher,  84, 

254,  1859;  Singer  «.   Walmsley,  1  1850. 
Fisher,  558,  I860;  McComb  «.  Bro- 


CHAP.    XVI.]  INFRINGEMENT.  289 

patent  to  use  any  machine  or  manufacture  claimed  therein, 
though  such  use  is  for  a  purpose  which  is  not  mentioned 
in  the  patent.1  But  it  has  been  held  that  a  machine,  which 
can  do  a  particular  kind  of  work,  is  not  an  infringement  of  a 
patent  on  a  different  machine,  which  cannot  do  the  same 
work.a 

§  341.  Mode  of  operation  is  a  criterion  of  infringement 
on  one  side  of  that  question,  but  not  on  the  other.  If  the 
mode  of  operation  of  an  alleged  infringing  thing  is  substan- 
tially different  from  that  covered  by  the  claim  alleged  to  be 
infringed,  it  follows  that  the  charge  of  infringement  must 
be  negatived  ;3  but  if  the  mode  of  operation  is  substantially 
the  same,  it  does  not  follow  that  the  charge  of  infringement 
must  be  affirmed.  In  that  case  the  question  must  be 
decided  by  some  additional  criterion.  To  establish  an 
infringement  of  a  claim,  the  facts  must  be  subjected  to 
several  successive  tests.  If  the  case  fails  on  either  of  those 
tests,  no  further  inquiry  need  be  made  ;  but  an  infringement 
cannot  be  affirmed  till  all  those  tests  have  been  applied 
and  have  been  withstood.  The  first  of  these  is  that  which 
relates  to  identity  of  mode  of  operation.  It  is  therefore 
important  to  know  wherein  this  requisite  identity  consists. 
A  dogmatic  statement  on  that  point  has  probably  never 
been  ventured  by  any  court.  The  nature  of  the  question 
seems  not  to  admit  of  an  answer  which  shall  be  at  once  short 
and  sufficient.  The  best  way  to  investigate  the  subject  is 
probably  to  reason  by  analogy  from  precedents  ;  and  accord- 
ingly several  of  the  sections  which  immediately  follow,  are 
devoted  to  an  analysis  of  cases,  with  a  view  to  furnishing 
the  investigator  with  data  for  such  reasoning. 

§  342.  The    Cawood    patent4    covered    a  machine  which 

1  Mabie  v.   Haskell,  2  Cliff.  511,      875,  1892. 

1865;  McComb  v.  Brodie,  1  Woods,  3  Field  v.  De  Comeau,  116  U.  S. 
159,  1871;  Zinn  v.  Weiss  7  Fed.  187,1886;  Yale  Lock  Co.  e.  Sargent. 
Rep.  916,  1881;  Union  Stone  Co  «.  117  U.  S.  378,  1886;  Smith  v.  Down- 
Allen,  14  Fed.  Rep.  353,  1882;  Cin-  ing.  1  Fisher,  83,  1850;  Eames  v. 
cinnati  Ice  Machine  Co.  v.  Brewing  Cook,  2  Fisher,  149,  1860. 
Co.  31  Fed.  Rep.  472,  1887.  «  Cawood  Patent,  94  U.  S.  706, 

2  Norton  «.  Jensen,  49  Fed.  Rep.  1876. 


290  INFRINGEMENT.  [CHAP.   XVI. 

combined  the  mode  of  operation  of  an  anvil,  with  the  mode 
of  operation  of  a  vise.  A  drawing  of  the  machine  is  printed 
on  page  492  of  1  Wallace.  The  railroad  rail  mended  upon 
it,  was  supported  by  it  as  by  an  anvil ;  and  at  the  same 
time  was  clasped  by  it  as  by  a  vise.  The  Supreme  Court 
held  that  the  "  Michigan  Southern  "  machine  did  not  infringe 
the  Cawood  patent,  because  while  that  machine  did  clasp 
the  rail  as  a  vise,  it  did  not  support  the  rail  as  an  anvil. 
The  same  tribunal  also  held  that  the  Beebe  and  Smith 
machine  did  not  infringe  the  Cawood  patent,  because  its 
mode  of  operation  was  different.  It  both  supported  and 
clasped  the  rail,  but  it  clasped  it  by  holding  it  between  two 
jaws,  which  jaws,  when  in  position,  rested  in  a  V-shaped 
notch  in  the  anvil.  The  exterior  of  the  jaws  were  also 
V-shaped,  in  order  to  fit  the  notch,  and  they  clasped  the 
rail  because  of  their  gravity,  and  not  in  the  manner  of  a 
vise.  They  also  supported  the  rail,  but  in  a  manner 
peculiar  to  themselves,  and  not  in  the  manner  of  an  anvil. 

§  343.  The  driven-well  patent,  reissue  No.  4372,  covers 
an  interesting  invention.  That  invention  is  practiced  by 
driving  into  the  ground  a  long  tube  closed  and  pointed  at 
its  lower  end," and  having  perforations  through  its  sides  just 
above  that  end  ;  and  by  attaching  a  pump  to  its  upper  end ; 
and  by  working  that  pump  whenever  water  is  desired.  The 
mode  of  operation  of  that  well  is  as  follows  :  The  working 
of  the  pump  rarefies  the  air  in  the  tube,  and  outside  of  the 
tube  in  the  neighborhood  of  its  lower  end,  and  that 
rarefication  causes  the  air  above  the  ground  to  force  the 
water  in  several  millions  of  cubic  feet  of  the  surrounding 
earth,  into  and  up  the  tube. 

The  alleged  infringer  in  one  case,1  followed  the  patent  in 
every  particular  except  that  instead  of  driving  the  tube  into 
the  earth,  or  into  a  hole  previously  made  by  driving  down 
a  rod  smaller  than  the  tube,  he  bored  a  hole  into  the  earth 
with  an  auger  larger  than  the  tube  which  he  placed  in  the 
hole  after  the  auger  was  withdrawn.  This  apparently  flight 

1  Andrews  ».  Long,  12  Fed.   Rep.  871,  1880. 


CHAP.   XVI.]  INFRINGEMENT.  291 

change  caused  the  well  to  have  a  substantially  different  mode 
of  operation  from  that  covered  by  the  patent.  The  pump, 
indeed,  rarefied  the  air  in  the  tube  as  before,  but  that 
rarefication  did  not  extend  into  the  ground  around  the  outside 
of  the  tube,  because  the  space  outside  of  the  lower  end  of  the 
tube  was  in  direct  communication  with  external  air,  through 
the  annular  space  which  surrounded  the  tube  throughout 
its  entire  length,  and  which  was  due  to  the  fact  that  the 
tube  was  smaller  than  the  hole  in  which  it  was  placed. 
Because  of  this  difference,  Judge  McCRARY,  with  excellent 
discrimination,  held  that  the  well  of  the  defendant  did  not 
infringe  the  driven-well  reissue. 

§  344.  Blanchard's  patent  for  a  machine  for  turning  and 
cutting  irregular  forms  consisted  of  a  combination  of  a 
model,  a  guide,  and  a  cutter-wheel.  When  the  machine 
was  in  operation,  the  guide  followed  the  irregularities  of  the 
model,  as  the  model  revolved  ;  and  the  guide  also  caused  the 
cutter  to  follow  the  same  irregular  curves,  while  the  rough 
block  was  revolved  under  the  cutting  edges.  Both  model 
and  block  had  a  continuous  lateral  motion,  as  well  as  a 
continuous  rotary  motion,  and  therefore  the  guide  and  the 
cutter- wheel  proceeded  in  corresponding  spiral  courses.  In 
that  way,  the  guide  traversed  all  parts  of  the  surface  of  the 
model,  and  the  cutter-wheel  traversed  all  .portions  of  the 
rough  block,  and  thus  reduced  the  latter  to  conformity  with 
the  shape  of  the  model.  An  infringer  in  one  case  *  so  com- 
bined the  parts  of  the  machine  that  the  model  and  rough 
block  both  rotated  by  an  intermittent  motion,  and  moved 
laterally  by  a  rectilinear  reciprocating  motion.  Justice 
GRIER  held  that  this  mode  of  operation  was  substantially 
unchanged  from  that  of  the  patent. 

§  345.  Hayden's  patent  for  a  machine  for  making  brass 
kettles  consisted  of  two  general  divisions.  1.  An  engine 
lathe  with  its  mandrel  t»  revolve  the  pulleys  and  the  gear- 
ing, and  having  special  devices  for  the  special  work  in 
hand.  2.  A  furnishing  or  spinning  tool  and  tool  carriage, 

1  Blanchard  0.  Reeves,  1  Fisher,  103,  1850. 


292  INFRINGEMENT.  CHAP.    XVI. 

secured  to  the  frame  of  the  lathe,  and  having  special  devices 
to  make  it  work  harmoniously  with  the  lathe  in  producing 
the  kettles  which  the  two  divisions  of  the  machine  jointly 
operated  to  manufacture.  These  two  divisions  were  ope- 
rated by  one  motive  power,  like  a  shaft,  which  might  be 
connected  with  a  water  wheel,  or  with  a  steam  engine,  or 
with  any  other  suitable  source  of  motion.  • 

The  infringer  in  one  case l  operated  the  first  division  of 
the  machine  by  one  such  motive  power;  but  he  operated 
the  second  division  by  another,  namely,  by  the  hand  of  a 
workman  turning  a  crank.  Judge  WOODRUFF  held  that  this 
was  not  such  a  change  of  mode  of  operation  as  amounted 
to  enough  to  negative  infringement. 

§  346.  The  Wells  hat-body  machine  consisted  of  a  revolv- 
ing brush  to  separate  and  throw  fibres  of  fur ;  a  perforated 
vacuum  cone  to  receive  the  fur  on  its  exterior  surface ;  and 
an  intermediate  tunnel,  to  guide  the  fur  from  the  brush  to 
the  cone.  The  patent  which  was  granted  for  that  invention 
was  three  times  surrendered  and  reissued.  The  second 
reissue  was  involved  in  a  celebrated  Supreme  Court  case.2 
That  reissue  described  the  machine  which  Wells  invented, 
and  it  claimed  the  mode  of  operation,  substantially  as 
described,  of  forming  "  bats  "  (hat  bodies)  of  fur  fibres.  The 
object  of  this  claim  was  to  cover  the  machine  of  Seth 
Boyden;  a  machine  which  had  the  same  general  mode  of 
operation  as  that  of  Wells,  but  which  was  substantially 
different  from  the  latter  in  one  of  its  parts.  This  attempt 
to  base  a  charge  of  infringement  on  sameness  of  "mode  of 
operation "  alone  was  occasioned  by  the  fact  that  Justice 
CURTIS,  in  delivering  the  opinion  of  the  Supreme  Court  in 
the  case  of  Winans  v.  Denmead,3  had  used  the  phrase  with 
great  frequency.  He  used  it  exactly  twenty  times  in  that 
case ;  and  the  counsel  for  the  Wells  patent,  when  arguing 
the  case  of  Burr  v.  Duryee,  formulated  seven  doctrines 


1  Waterbury  Brass  Co.  v.  Miller,       1863. 

9  Blatch.  94,  1871.  3  Winans  v.  Denmead,  15  How- 

2  Burr  v.  Duryee,  1  Wallace,  531,      ard,  330,  1853. 


CHAP.    XVI.]  INFRINGEMENT.  293 

which  they  stated  were  deducible  from  that  score  of  instances. 
Among  those  doctrines  the  fourth  was  this :  That  copying 
a  mode  of  operation  is  an  infringement.  But  Justice  GRIER, 
who  was  one  of  the  majority  of  the  court  which  decided 
Winans  v.  Denmead,  was  convinced  that  the  latter  decision 
was  erroneous,  or  that  it  did  not  mean  what  it  was  gener- 
ally understood  to  signify,  for  in  Burr  v.  Duryee  he  deliv- 
ered the  unanimous  opinion  of  the  Supreme  Court  rejecting 
the  complainant's  contention.  The  case  of  Winans  v.  Den- 
mead  cannot  therefore  be  fairly  cited  as  an  authority  on 
this  point,  for  if  it  is  not  consistent  with  Burr  v.  Duryee,  it 
was  overruled  by  the  latter,  and  if  it  is  consistent  with  the 
latter  case,  its  expressions  are  likely  at  least  to  mislead  the 
reader,  as  they  misled  the  counsel  for  the  Wells  patent. 
Harmoniously  with  its  decision  in  Burr  v.  Duryee,  the 
Supreme  Court  has  ever  since  had  a  positive  tendency  to 
disregard  whatever  is  abstract  and  intangible  in  questions 
of  infringement,  and  to  base  its  conclusions  upon  the  con- 
crete features  of  the  issues  at  bar. 

§  346«.  The  Pope  electric  railroad  signal  consisted  of  the 
combination  of  an  electric  battery ;  a  peculiar  arrangement 
of  electric  circuits ;  and  two  or  more  circuit  closers,  operat- 
ing two  or  more  visual  or  audible  signals,  situated  at  inter- 
vals along  the  line  of  a  railroad.  That  peculiar  arrangement 
of  electric  circuits  essentially  consisted  in  attaching  two 
line  wires  to  the  positive  and  negative  poles  of  a  battery, 
respectively;  and  in  extending  both  of  those  wires  any 
required  distance  in  a  direction  substantially  parallel  to 
the  line  of  the  railroad ;  and  insulating  both  from  the  earth 
and  from  each  other ;  and  in  connecting  one  of  them  at 
intervals  with  insulated  rails  in  one  of  the  two  lines  of 
rails  of  the  railroad  track ;  and  in  connecting  the  other  one 
of  those  wires  at  the  same  intervals  with  insulated  rails  in 
the  other  line  of  rails  in  the  same  track ;  and  interposing 
an  electro-magnet  at  some  point  in  each  of  these  latter  con- 
nections. An  alleged  infringer  in  one  case  *  used  an  electric 

1  Electric  Signal  Co.  v.  Hall  Signal  Co.  114  U.  S.  87,  1885. 


294  INFRINGEMENT.  [CHAP.    XVI. 

railroad  signal  differing  from  that  of  Pope  mainly  in  the 
peculiar  arrangement  of  the  electric  circuits.  That  differ- 
ence consisted  mainly  in  disconnecting  the  negative  pole  of 
the  battery  from  its  line  wire,  and  in  connecting  that  pole 
with  the  earth  adjacent  thereto,  and  in  connecting  the  remote 
end  of  the  disconnected  line  wire  with  the  earth  adjacent  to 
that  end.  These  changes  of  arrangement  changed  the  mode 
of  operation  of  the  apparatus,  in  that  they  caused  the  elec- 
tricity to  traverse  circuits  of  equal  length  when  the  series 
of  circuit  closers  were  successively  operated,  whereas  Pope's 
arrangement  caused  the  electricity  to  traverse  circuits  of 
widely  variant  lengths  at  such  times.  This  change  of  mode 
of  operation  resulted  in  a  uniformity  of  electrical  resistance 
among  all  the  circuits,  and  thus  much  increased  the  utility 
of  the  apparatus.  The  Supreme  Court  therefore  held  the 
alleged  infringer's  combination  to  be  an  independent  inven- 
tion, substantially  different  from  that  of  Pope,  and  not  an 
infringement  of  his  patent. 

§  347.  Addition  to  a  patented  machine  or  manufacture 
does  not  enable  him  who  makes,  uses,  or  sells  the  patented 
thing  with  the  addition,  to  avoid  a  charge  of  infringement.1 
This  is  true  even  where  the  added  device  facilitates  the 
working  of  one  of  the  parts  of  the  patented  combination, 
and  thus  make  the  latter  perform  its  function  with  more 
excellence  and  greater  speed ; 2  or  where  the  added  part 
hinders  the  patented  combination  from  having  some  of  its 
minor  merits.3  But  if  a  patented  combination  differs  from 
some  older  combination,  only  in  the  omission  of  one  of  the 
parts  of  the  latter,  and  in  a  resulting  difference  of  mode  of 
operation,  the  restoration  of  the  older  structure  by  adding 


1  Western  Electric  Co.  v.  LaRue,  Fed.  Rep.  358,  1890. 

139  U.  S.  607,  1891;  Carr  v.  Rice,  1  2  Cochrane  «.    Deener,   94  U.  8. 

Fisher,  209  1856;  Roemer®.  Simon,  786,  1876;  Wirt  v.  Brown,  30  Fed. 

20  Fed.  Rep.    197,  1884;  Royer  v.  Rep.  187,  1877. 

Coupe,   29  Fed.    Rep.    366,    1886;  3  Sawyer  Spindle  Co.  v.  Morrison 

Filley  v.    Stove  Co.    30  Fed.  Rep.  Co.  52  Fed.  Rep.  593,  1892. 
434,  1887;  Williames  v.  Barnard,  41 


CHAP.   XVI.]  INFRINGEMENT.  295 

the  part  which  the  patented  combination  omitted,  would 
not  constitute  an  infringement  of  the  latter.1 

§  348.  Changing  the  relative  positions  of  the  parts  of  a 
machine  or  manufacture  does  not  avert  infringement,  where 
the  parts  transposed  perform  the  same  respective  functions 
after  the  change  as  before,2  In  the  first  of  the  cases  just 
cited,  the  thing  transposed  was  a  beater  shaft  in  a  corn- 
sheller.  Both  in  its  original  and  in  its  new  position,  its 
function  was  to  force  the  ears  of  corn  into  the  throat  of  the 
sheller.  In  the  second  case,  the  thing  transposed  was  the 
outlet  vapor  flue  of  a  quicksilver  furnace ;  and  that  flue 
operated  in  the  same  way  to  perform  the  same  function  in 
the  infringing  apparatus  that  it  did  in  the  patented  furnace. 

But  changing  «the  relative  positions  of  the  parts  of  a 
machine  does  avert  infringement,  where  the  changing  of 
those  positions  so  changes  the  functions  of  the  parts, 
that  the  machine  acquires  a  substantially  different  mode 
of  operation,  even  though  the  result  of  the  machine 
remains  the  same.8  A  suit  for  infringement  cannot 
be  sustained  against  him  who  makes,  uses,  or  sells  a 
substantially  different  combination,  even  though  it  in- 
cludes exactly  the  same  ingredients  as  those  claimed  in 
combination  by  the  patent  in  suit.4  The  owner  of  a  pat- 
ent for  a  combination  cannot  suppress  a  newer,  better, 
and  substantially  different  combination  of  the  same  ingre- 
dients.5 

§  349.  Omission  of  one  ingredient  of  a  combination  cov- 
ered by  any  claim  of  a  patent,  averts  any  charge  of  infringe- 


1  Shoemaker  v.  Merrow,  61  Fed.  400,  1894. 

Rep.  948, 1894.  a  Brooks  v.  Fisk,  15  Howard.221, 

2  Adams  v.  Mfg.  Co.   3  Bann.    &  1853. 

Ard.  1,  1877;  Knox  ».  Quicksilver  4  Gill  v.    Wells,  22  Wallace,  14, 

Mining  Co.   6  Sawyer,   438,    1878;  1874;  Snow  v.  Railway  Co.  121  U. 

North  Western  Horse  Nail  Co.  v.  S.   629,   1886;  Singer  Mfg.   Co.   v. 

Horse  Nail  Co.  28  Fed.  Rep.  234,  Brill,  54  Fed.  Rep.  384,  1892. 

1886;  Consolidated  Rolling  Mill  Co.  &  Seymour  v.   Osborne,  11   Wal- 

v.  Coombs,   39  Fed.  Rep.  33,  1889;  lace,  555,  1870. 
Devlin  v.  Paynter,  64  Fed.   Rep. 


296  INFRINGEMENT.  [CHAP.    XVI. 

ment  based  on  that  claim.1  A  combination  is  an  entirety. 
If  one  of  its  elements  is  omitted,  the  thing  claimed  disap- 
pears. Every  part  of  the  combination  claimed  is  conclu- 
sively presumed  to  be  material  to  the  combination,  and  no 
evidence  to  the  contrary  is  admissible  in  any  case  of  alleged 
infringement.2  The  patentee  makes  all  the  parts  of  a  com- 
bination material,  when  he  claims  them  in  combination  and 
not  separately.3  A  patentee  may,  however,  describe  all  the 
devices  in  his  machine  or  manufacture,  and  instead  of  claim- 
ing all  or  any  particular  portion  of  them  in  combination, 
may  claim  so  much  of  the  described  mechanism  as  pro- 
duces a  particular  described  result.  Such  a  claim  is 
infringed  by  him  who,  without  ownership  or  license,  makes, 
uses,  or  sells  any  apparatus  made '  up  of  enough  of  the 
described  devices  to  produce  the  specified  result,  by  the 
specified  mode  of  operation.4  The  rule  stated  at  the  head 
of  this  section  is  perhaps  the  best  known  and  most 
frequently  applied  of  all  the  rules  which  pertain  to  infringe- 
ment ;  but  it  has  no  application  to  anything  which  depends 
upon  a  particular  form  for  patentability,  and  which  for 
convenience  may  be  made  in  several  sections.  A  shoe  last, 
for  example,  even  if  made  in  only  two  sections,  may  infringe 


1  Prouty  v.   Ruggles,  16  Peters,  2  Vance  v.  Campbell,  1  Black,430, 

341,   1842;    Eames  v.    Godfrey,    1  1861;  Fay®.  Cordesman,  109  U.  S. 

Wallace,  78,  1863;  Case  ».  Brown,  420,  1883;  Sargent  v.  Lock  Co.  114 

2   Wallace, '  320,   1864;    Dunbar  «.  U.  S.  86,  1884;  Shepard  v.  Carrigan, 

Myers,  94  U.  S.  187. 1876;  Fuller  v.  116  U.  S.  597,  1885;  Yale  Lock  Co. 

Yentzer,  94  U.  S.  297,  1876;  Rowell  v.   Sargent,  117  U.    S.   378,    1885; 

0.   Lindsay,    113  U.    S.   102,   1884;  McClain  v.  Ortmayer,  141  U.  S.  425, 

Shepard  v.  Carrigan,  116  U.  S.  597,  1891. 

1885;  Sharp  v.  Riessner,  119  U.  S.  3  Water-Meter  Co.  v.  Desper,  101 

636,  1886;  Derby  v.  Thompson,  146  U.  S.   332,  1879;  Brown  v.   Davis, 

U.   S.  482,    1892;    Weatherhead  v.  116    U.    S.  249,    1885;  Williams  «. 

Coupe,  147  U.  S.  335, 1893;  Dobson  Stolzenbach,  23  Fed.  Rep.  41, 1885; 

v.  Cubley,   149  U.    S.    120,    1893;  Otley  v.  Watkins,  36  Fed.  Rep.  324, 

Wright  «.  Yuengling,  155  U.  S.   52,  1888. 

1894;  Black  Diamond  Coal  Co.  •».  4  Silsby  «.  Foote,  14  Howard,  218, 

Excelsior  Coal  Co.   156  U.  S.  617,  1852. 
1895. 


CHAP.    XVI.]  INFRINGEMENT.  297 

a  patent  for  a  last  of  the  same  shape,  but  which  is  made  in 
three  sections  instead  of  in  two.1 

§  350.  No  substitution  of  an  equivalent,  for  any  ingredient 
of  a  combination  covered  by  any  claim  of  a  patent,  can 
avert  a  charge  of  infringement  of  that  claim.2  But  like 
substitution  of  something  which  is  not  an  equivalent,  will 
have  that  effect.3  The  doctrine  of  equivalents  may  be 
invoked  by  any  patentee,  whether  he  claimed  equivalents  in 
his  claim,4  or  described  any  in  his  specification,5  or  omitted 
to  do  either  or  both  of  those  things.  The  patentee,  having 
described  his  invention  and  shown  its  principles,  and  claimed 
it  in  that  form  which  most  perfectly  embodies  it,  is,  in  con- 
templation of  law,  deemed  to  claim,  every  form  in  which  his 
invention  may  be  copied,  unless  he  manifests  an  intention 
to  disclaim  some  of  these  forms.6  Combination  patents 
would  generally  be  valueless  in  the  absence  of  a  right  to 
equivalents,  for  few  combinations  now  exist,  or  can  hereafter 
be  made,  which  do  not  contain  at  least  one  element,  an 
efficient  substitute  for  which  could  readily  be  suggested  by 
any  person  skilled  in  the  particular  art.7  But  where  a 
patentee  states  in  his  specification  that  a  particular  part  of 
his  invention  is  to  be  constructed  of  a  particular  material, 
and  states  or  implies  that  he  does  not  contemplate  any 
other  material  as  being  suitable  for  the  purpose,  it  is  not 
certain  that  any  other  material  will  be  treated  by  a  court 


1  Mabie  «.  Haskell,  2  Cliff.  611,  562,  1878. 

1865;  White  v.  Walbridge,  46  Fed.  4  Dental  Vulcanite  Co.  v.  Davis, 

Rep.  526,  1891.  102  U.  S.  229,  1880;  Hunt  Bros.  Fruit 

2  O'Reilly  v.  Morse,  15  Howard,  Packing  Co.  v.   Cassidy,   53  Fed. 
62,  1853;  Imhaeuser  v.  Buerk,  101  Rep.  261,  1892. 

U.  8.  655,   1879;  Reed  v.  Chase,  25  6  Union  Metallic  Cartridge  Co.  v. 

Fed.  Rep.  94,  1885;  American  Box  United  States  Cartridge  Co.  2  Bann. 

Machine  Co.  «.  Day,  32  Fed.  Rep.  &  Ard.  594,  1877. 

585,  1887;    Ligowski  Clay  Pigeon  ' 6  Western  Electric  Co.  v.  La  Rue, 

Co.   v.   Clay  Bird  Co.  34  Fed  Rep.  139  U.  S.  606,  1891. 

331,1888.  7Turrell  v.   Spaeth,  3  Bann.  & 

»  Railway  Co.  v.  Sayles,  97  U.  S.  Ard.  458,  1878. 


298  INFRINGEMENT.  [CHAP.    XVI. 

as  an  equivalent  of  the  one  recommended  in  the  patent.1 
§  352.  One  thing,  to  be  the  equivalent  of  another,  must 
perform  the  same  functions  as  that  other.2  If  it  performs 
the  same  function,  the  fact  that  it  also  performs  another 
function  is  immaterial  to  any  question  of  infringement.3 
Therefore,  it  sometimes  happens  that  a  junior  device  is  an 
equivalent  of  a  senior  device  in  a  sense  that  will  constitute 
it  an  infringement  of  a  patent  for  the  latter ;  at  the  same 
time  that  the  senior  device  is  not  an  equivalent  of  the  junior 
device  in  a  sense  that  will  cause  the  former  to  negative 
invention  or  novelty  in  the  latter.4  One  thing  may  accord- 
ingly be  an  equivalent  of  another,  though  it  does  more  than 
that  other,  but  it  cannot  be  such  an  equivalent  if  it  does 
less.5  But  the  test  of  function  is  only  the  first  of  several 
tests  of  equivalency.  The  fact  that  one  thing  performs  the 
same  function  as  another,  though  necessary,  is  not  sufficient 
to  make  it  an  equivalent  thereof.6 

§  353.  Function  must  be  performed  in  substantially  the 
same  way  by  an  alleged  equivalent,  as  by  the  thing  of  which 
it  is  alleged  to  be  an  equivalent,  in  order  to  constitute  it 
such.7  This  substantial  sameness  of  way  is  not  necessarily 


1  Aiken  v.  Bemis,  3  Woodbury  &  4  In  re    Hebard,    1    McArthur's 
Minot,  348,  1847;  Harris  v.  Allen,  Patent  Cases,  550,  1857;    Loercher 
15  Fed.  Rep   106,  1883;  Schillinger  v.  Crandall,  11  Fed.  Rep.  857,  1881; 
v.  Cranford,  37  Off.  Gaz.  1349, 1885;  Section  36  of  this  book. 

Reece  Button-Hole  Mach.   Co.   ®.  5  Bliss  v.  Haight,  3  Fisher,  626, 

Globe  Button-Hole  Mach.   Co.  61  1869. 

Fed.  Rep.  965,  1894.  «  Eames  «.  Godfrey,  1   Wallace, 

2  Machine  Co.  v.  Murphy,  97  U.  S.  78, 1863;  Conover  v.  Roach,  4  Fisher, 
125,  1877;  Rowell  -o.  Lindsay,  113  12,    1857;     Merriam    v.    Drake,    5 
U.  S.  103,  1884;  Roller  Mill  Patent  Fisher.  259,  1872. 

156  U.  S.  271,  1895;  Railway  Mfg.  7  Burr  v.  Duryee,  1  Wallace  573, 

Co.   v.   Railroad  Co.  30  Fed.  Rep.  1863;  Werner  v.  King,  96  U.  S.  230, 

238,  1887;  Seeley  «.  Brush  Electric  1877;  Dryfoos  v.  Wiese,  124  U.  S. 

Co.  44  Fed.  Rep.  420,  1890.  37,  1887;   Forncrook  ®.    Root,  127 

3Foss  0.    Herbert,  2  Fisher,  31,  U.  S.  181,1887;  Sargent®.  Burgess, 

1856;  Sarven  v.  Hall,  9  Blatch.  524,  129  U.  S.  19,  1889;  Sickels  v.  Bor- 

1872;  Wheeler  v.  Reaper    Co.    10  den,  3  Blatch.  535,  1856;  Peard  «.  . 

Blatch.  195,  1872;  Kendrick  v.  Em-  Johnson,  23  Fed.  Rep.  509,  1885; 

mons,   3  Bann.    &  Ard.  623.  1878;  Tonduer  v.  Chambers,  37  Fed.  Rep. 

Norton  v.    California  Can  Co.   45  337,  1889;    Pacific  Railway  Co.  v. 

Fed.   Rep.   638,   1891;    Masseth  v.  Butte  City  Railway  Co.  58  Fed.  Rep. 

Palm,  51  Fed.  Rep.  825,  1892.  420,  1893. 


CHAP.    XVI.]  INFRINGEMENT.  299 

au  identity  of  merit,1  nor  a  theoretical  scientific  sameness.8 
In  a  purely  scientific  sense,  a  screw  always  performs  its 
function  in  a  substantially  different  way  from  a  lever,  and 
in  substantially  the  same  way  as  a  wedge.  Screws  and 
wedges  are  equally  inclined  planes,  while  a  lever  is  an 
entirely  different  elementary  power.  But  screws  and  levers 
can  practically  be  substituted  for  each  other  in  a  larger 
number  of  machines  than  screws  and  wedges  can  be  simi- 
larly substituted.  When  a  lever  and  a  screw  can  be  inter- 
changed and  still  perform  the  same  function  with  a  result 
that  is  beneficially  the  same,  they  are  said  to  perform  the 
same  function  in  substantially  the  same  way.3  But  one 
thing  may  be  an  equivalent  of  another  in  one  environment, 
and  not  such  an  equivalent  in  another  situation.4  Springs 
and  weights  are  generally  equivalents;5  but  where  the 
environment  is  such  that  a  spring  will  operate  successfully 
while  a  weight  will  not  so  operate,  there  they  are  not  equiv- 
alents.6 While  in  most  cases  a  mere  handle  is  not  an 
equivalent  of  a  lever,  it  is  such  an  equivalent  where  its 
connections  are  such  that  it  performs  the  same  function  in 
substantially  the  same  way.7  But  infringement  is  averted 
by  using  a  hand,  instead  of  a  lever  of  a  claimed  combina- 
tion, to  work  a  rod.8  However,  in  one  case,  the  Supreme 
Court  went  to  the  length  of  deciding  a  confined  column  of 
water  in  a  cylinder,  worked  by  a  pump  and  working  a  pis- 
ton, to  be  an  equivalent  of  a  combination  of  a  vibrating 


1  Brush  v.  Condit,  132  U.  S.  49,  5  Imhaeuser  «.  Buerk,  101  U.  S. 
1889;  Roosevelt  •».  Telegraph  Co.  656,    1879;    American    Roll  Paper 
33  Fed.  Rep.  510,  1887;  Standard  Co.  v.  Weston,  45  Fed.  Rep.  692, 
Folding  Bed  Co.  v.  Osgood,  58  Fed.  1891. 

Rep.  584,  1893.  6  Cross   v.  Mackinnon,    11    Fed. 

2  Gordon  v.  Warder,  150  U.  S  52.  Rep.  601,  1882. 

1893.  7  Corn-Planter  Patent,  23  Wal- 

3Turrell  «.  Spaeth,  3  Bann.  &  lace,  235,  1874;  Steam  Gauge  & 

Ard.  458,  1878.  Lantern  Co.  «.  Mfg.  Co.  28  Fed. 

4  Cochrane  v.  Deener,  94  U.  S.  Rep.  619,  1886. 

789,  Ic76;  Hubel  «.  Dick,  28  Fed.  8  Brown  v.  Davis,  116  U.  S.  249, 

Rep.  136,  1886.  1885. 


300  INFRINGEMENT.  [CHAP.    XVI. 

arm,  toggle  joint,  and  other  mechanical  devices,  when  used 
to  transmit  vibratory  power.1 

§  354.  Whether  a  device,  in  order  to  be  an  equivalent  of 
another,  must  have  been  known  at  the  time  of  the  invention 
of  the  machine  which  contains  the  latter,  is  a  question 
which  was  elaborately  investigated  and  discussed  in  Sec- 
tions 354  to  358  of  the  former  editions  of  this  book ;  because 
it  then  appeared  to  be  not  only  very  important,  but  also 
unsettled.  But  the  weight  of  reason  was  always  much  on 
the  side  of  the  negative  of  that  question ;  and  the  weight  of 
authority  has  now  accumulated  so  preponderatingly  upon 
the  same  side,  that  the  question  may  now  be  held  to  be 
settled  in  the  negative.2  It  is  therefore  safe  to  define  an 
equivalent  as  a  thing  which  performs  the  same  function, 
and  performs  that  function  in  substantially  the  same  man- 
ner, as  the  thing  of  which  it  is  alleged  to  be  an  equivalent. 

§  359.  Primary  inventions  are  entitled  to  a  somewhat 
looser  application  of  this  definition  of  an  equivalent  than 
those  inventions  which  are  secondary.3  A  primary  inven- 
tion is  one  which  performs  a  function  never  performed  by 


1  Blake  «.  Robertson,   94  U.  S.  Burt> 15  Fed-  ReP- 113>  1888;  United 

732  1876.  Nickel  Co.  v.  Pendleton,  15  Fed. 

a  O'Reilly  «.  Morse,  15  Howard,  Rep.  745,  1883;  Murphy  v.  Trenton 

123,  1853;  Burr  v.  Duryee,  1  Wall.  Rubber  Co.  45  Fed.  Rep.  570,  1891; 

573,    1863;    Mason  «.   Graham,   23  Norton  v.   California    Can  Co.  45 

Wall.  275, 1874;  Cochraneo  Deener,  Fed-   ReP-  638,  1891;  Jones  Co.®. 

94  U.  S.  780,  1876;    Union  Paper  Munger  Co.  49  Fed.  Rep.  67,  1891; 

Bag  Machine  Co.  «.  Murphy,  97  U.  National    Cash    Register    Co.    «. 

S.   125,  1877;    Clough  v.  Mfg.  Co.  American    Cash    Register    Co.   53 

106  U.    S.   178,   1882;    Cantrell  «.  Fed.    Rep.  373,   1893;     Merrow  t>. 

Wallick,  117  U.  S.  695, 1885;  Sickles  Shoemaker,  59  Fed.  Rep.  128, 1893; 

v.  Borden,  3  Blatch.  535,  1856;  Ca-  Beach  ®.  Box  Machine  Co.  63  Fed. 

hoon  «.  Ring,   1   Cliff.   620,    1861;  Rep.   606,    1894;     Edison    Electric 

Roberts  t>.  Harnden,  2  Cliff.  506,  Light  Co.  v.  Boston  Lamp  Co.  62 

1865;  Graham  v.  Mason,  5  Fisher,  Fed.  Rep.  399,  1894;  Stahl  v.  Wil- 

11,   1869;    Harwood  v.  Mfg.  Co.  3  Hams,  64  Fed.  Rep.  124,  1894. 

Fisher,  530, 1869;  Vogler  v.  Semple,  3  Miller  v.  Eagle  Co.  151  U.  S. 

7  Bissell,  382,  1877;  Potter  v.  Stew-  207,  1894;   Dederick  «.  Seigmund, 

art,  18  Blatch.  563,  1881;  Evory  ».  51  Fed.  Rep.  235, 1892. 


CHAP.   XVI.]  INFRINGEMENT.  301 

any  earlier  invention ; '  while  a  secondary  invention  is  one 
which  performs  a  function  previously  performed  by  some 
earlier  invention,  but  which  performs  that  function  in  a 
substantially  different  way  from  any  that  preceded  it.2  The 
three  leading  Supreme  Court  cases,  which  have  attended  to 
the  distinction  now  under  treatment,  attended  thereto  in 
the  following  terms : 

In  the  first  of  these  cases  the  court  said :  "  If  the  patentee 
be  the  original  inventor  of  the  device  or  machine  called  the 
divider,  he  will  have  a  right  to  treat  as  infringers  all  who 
make  dividers  operating  on  the  same  principle,  and  per- 
forming the  same  functions,  by  analogous  means  or  equiva- 
lent combinations,  even  though  the  infringing  machine  may 
be  an  improvement  of  the  original,  and  patentable  as  such. 
But  if  the  invention  claimed  be  itself  but  an  improvement 
on  a  known  machine  by  a  mere  change  of  form  or  combi- 
nation of  parts,  the  patentee  cannot  treat  another  as  an 
infringer  who  has  improved  the  original  machine  by  use  of 
a  different  form  or  combination  performing  the  same  func- 
tions. The  inventor  of  the  first  improvement  cannot  invoke 
the  doctrine  of  equivalents  to  suppress  all  other  improve- 
ments which  are  not  mere  colorable  invasions  of  the  first."3 

In  the  second  of  these  cases  the  court  said :  "  In  such 
cases,  if  one  inventor  precedes  all  the  rest,  and  strikes  out 
something  which  includes  and  underlies  all  that  they  pro- 
duce, he  acquires  a  monopoly,  and  subjects  them  to  tribute. 
But  if  the  advance  toward  the  thing  desired  is  gradual,  and 
proceeds  step  by  step,  so  that  no  one  can  claim  the  com- 
plete whole,  then  each  is  entitled  only  to  the  specific  form 
of  device  which  he  produces,  and  every  other  inventor  is 
entitled  to  his  own  specific  form,  so  long  as  it  differs  from 
those  of  his  competitors,  and  does  not  include  theirs."4 

1  Norton  v.  Jensen,  49  Fed.  Rep.  Fed.  Rep.  86,  1890. 
862,  1892;  National  Cash  Register  8  Butz    Thermo-Electric    Co.    ®. 
Co.  «.  American  Cash  Register  Co.  Electric  Co.  36  Fed.  Rep.  192,  1888. 
53    Fed.   Rep.   372,   1892;     Boston  8  McCormick  v.  Talcott,  20  How- 
Lasting  Maeh.  Co.  v.  Woodward,  ard,  405,  1857. 
53  Fed.  Rep.  481,   1893;  Celluloid  *  Railway  Co.  «.  Sayles,  97  U.  8. 
Mfg.  Co.  v.  Arlington  Mfg.  Co.  44  556,  1878. 


302  INFRINGEMENT.  [CHAP.    XVI. 

In  the  third  of  these  cases  the  court  said :  "  Where  an 
invention  is  one  of  a  primary  character,  and  the  mechanical 
functions  performed  by  the  machine  are,  as  a  whole, 
entirely  new,  all  subsequent  machines  which  employ  sub- 
stantially the  same  means  to  accomplish  the  same  result, 
are  infringements,  although  the  subsequent  machine  may  con- 
tain improvements  in  the  separate  mechanisms  which  go  to 
make  up  the  machine."  And  the  court  also  said  that  secondary 
patents  ought  to  receive  a  narrower  construction  than  this.1 

§  362.  The  three  leading  cases  and  the  other  cases  which  fol- 
low thera,a  teach  general  doctrines  rather  than  precise  rules ; 
and  those  general  doctrines  may  be  concisely  stated  as  follows. 

There  are  two  tests  of  equivalency.  1.  Identity  of  func- 
tion. 2.  Substantial  identity  of  way  of  performing  that 
function.3  Primary  as  well  as  secondary  patents  are 
infringed  by  no  substitutions  that  do  not  fully  respond  to 
the  first  of  these  tests.  The  second  of  these  tests  is  some- 
what elastic,  because  it  contains  the  word  "  substantial." 
That  word  is  allowed  to  condone  more  and  more  important 
differences  in  the  case  of  a  primary  patent,  than  in  the  case 
of  a  secondary  one.4  In  the  case  of  a  patent  narrowed  in 
construction  by  an  extensive  state  of  the  preceding  art,  the 
word  "  substantial "  will  give  but  little  elasticity  to  the 
application  of  the  doctrine.5  If  fewer  inventions  preceded 


1  Morley   Machine   Co.  v.   Lan-  ure  Bell  Co.  v.  Bevin  Mfg.  Co.  64 
caster,  129  U.  S.  273,  1889.  Fed.  Rep.  864,  1894. 

2  Pope  Mfg.  Co.  ?>.  Gormully  Mfg.  4  Miller  ».  Eagle  Co.    151  U.  8. 
Co.  144  U.  8.  242,  1892;  Sessions  v.  207,  1894. 

Romadka,    145    U.    8.    45,     1892;  5  Duff  v.   Pump  Co.   107    U.    8. 

Knapp  v.   Morss,   150  U.    8.   280,  639,  1882;  Knapp  v.  Morss,  150  U. 

1893;  Miller  v.  Eagle  Co.  151  U.  8.  8.  230,   1893;    Boyd  v.  Janesville 

204,  1894.  Hay  Tool  Co.  158  U.  8.   267,   1895; 

3  Steam  Gauge  and  Lantern  Co.  v.  Dederick  v.  Seigmund,  51  Fed.  Rep. 
Rogers,  29  Fed.   Rep.   453,    1886:  235,  1892;    Standard  Folding   Bed 
Clark  v.  Wilson,  30  Fed.    Rep.  373,  Co.  v.   Osgood,  51   Fed.  Rep.  678, 
1887;  Butz  Thermo-Electric  Co.  «.  1892;  Joslin  v.  Northern  Pacific  Ry. 
Electric  Co.  36  Fed.  Rep.  195,  1888;  Co.  55  Fed.  Rep.   68   1893;   Bundy 
Harmon  ».  Struthers,  43  Fed.  Rep.  Mfg.  Co.  v.  Time  Recorder  Co.  64 
443,   1890;    National    Typographic  Fed.  Rep.  853, 1894;  Schuyler  Elec- 
Co.  v.  New  York  Typograph  Co.  46  trie  Co.,  v.  Electric  Supply  Co.   66 
Fed.  Rep.  116,  1891;  New  Depart-  Fed.  Rep.  315,  1895. 


CHAP.   XVI.]  INFRINGEMENT.  303 

the  one  at  bar,  the  word  will  have  somewhat  more  of  carrying 
power.  When  the  invention  at  bar  is  strictly  primary,  and 
especially  if  it  is  extremely  useful,  then  the  word  "  substan- 
tial "  will  be  made  to  cover  differences  alike  numerous  and 
important,  and  even  highly  creditable  to  the  infringer  who 
invented  them.1  Probably  the  most  striking  instances  of 
the  latter  sort  which  are  to  be  found  in  the  books,  are  to  be 
found  in  the  telephone  cases.2 

§  363.  A  change  of  form  does  not  avoid  an  infringement 
of  a  patent,  unless  the  patentee  specifies  a  particular  form 
as  the  means  by  which  the  effect  of  the  invention  is  pro- 
duced,3 or  otherwise  confines  himself  to  a  particular  form 
of  what  he  describes.4  Even  where  a  change  of  form  some- 
what modifies  the  construction,  the  action  or  the  utility  of 
a  patented  thing,  non-infringement  will  seldom  result  from 
such  a  change.  The  best  way  to  show  the  scope  and  mean- 
ing of  these  rules  is  to  collect  and  explain  the  instances  in 
which  changes  of  form  have  been  held  to  be  immaterial  to 
questions  of  infringement. 

§  364.  Strowbridge  v.  Lindsay5  was  a  case,  the  patent 
involved  in  which,  covered  a  coffee  mill.  The  hopper  and 
grinding  shell  of  that  mill  were  formed  in  a  single  piece, 


1  Hubel  v.  Dick,  28  Fed.  Rep.  136,  1894;  Beach  v.  Box  Mach.  Co.  63 
1886;  Brush  Electric  Co.fl.Ft.  Wayne  Fed.  Rep.  606,  1894;  Rogers  Typo- 
Electric  Co.  40  Fed.  Rep.  833, 1889;  graph  Co.  v.  Mergenthaler  Co.  64 
Rapid  Store  Service  Ry.  Co.  v.  Fed.  Rep.  803,  1894. 
Taylor,  43  Fed.  Rep.  256,  1887;  2  The  Telephone  Cases.  126  U.  S. 
Harmon  v.  Struthers,  43  Fed.  Rep.  531,  1888;  American  Bell  Telephone 
443,  1890;  Brush  Electric  0.  Elec-  Co.  v  Spencer,  8  Fed.  Rep.  509, 
trie  Co.  43  Fed.  Rep.  541,  1890;  1881;  American  Bell  Telephone  Co. 
Brush  Electric  Co.  v.  Electric  Imp.  •».  Dolbear,  15  Fed.  Rep.  488,  1883. 
Co.  52  Fed.  Rep.  977,  1892;  3  O'Reilly  v.  Morse,  15  Howard, 
National  Cash  Register  Co.  v.  123,  1853;  Ewart  Mfg.  Co.  v.  Iron 
American  Cash  Register  Co.  53  Co.  31  Fed.  Rep.  150,  1887;  Pacific 
Fed.  Rep.  372,  1892;  Mergenthaler  Cable  Ry.  v.  Butte  City  Ry.  Co.  55 
Co.  v.  Press  Pub.  Co.  57  Fed.  Rep.  Fed.  Rep.  763,  1893. 
505, 1893;  Reece  Button-Hole  Mach.  *  Pope  Mfg.  Co.  v.  Mfg.  Co.  34 
Co.  v.  Globe  Button-Hole  Mach.  Fed.  Rep.  890,  1888. 
Co.  61  Fed.  Rep.  964, 1894;  Bowers  6  Strowbridge  v.  Lindsay,  6  Fed. 
v.  Von  Schmidt,  63  Fed.  Rep.  580,  Rep.  510.  1881. 


304  INFRINGEMENT.  [CHAP.    XVI. 

and  were  suspended  within  the  box,  by  the  upper  part  of 
the  hopper,  or  by  a  flange  thereon.  The  defendant's  mill 
was  like  the  complainant's,  except  that  the  hopper  and  the 
grinding  shell  were  separate  constructions,  but  were  firmly 
fastened  together  before  they  were  suspended  in  the  box. 
That  change  of  form  resulted  in  a  change  of  construction, 
but  in  no  change  of  action  or  of  utility.  It  was  of  course 
held  not  to  avoid  infringement. 

§  365.  Ives  v.  Hamilton1  was  a  case  wherein  the  patent 
covered  a  combination  of  a  saw-mill  saw,  with  a  pair  of 
curved  guides  at  the  upper  end  of  the  saw ;  and  a  lever, 
connecting  rod  of  a  pitman,  straight  guides,  pivoted  cross- 
head,  and  slides  or  blocks,  and  crank-pin,  or  their  equiva- 
lents, at  the  opposite  end ;  whereby  the  toothed  edge  of  the 
saw  was  caused  to  move  unequally  forward  and  backward 
at  its  two  ends  while  sawing.  The  result  was  a  rocking  or 
vibratory  motion  in  the  saw  instead  of  a  straight  recipro- 
cating motion  theretofore  characteristic  of  saw-mill  saws. 
The  defendant  substituted  for  the  curved  guides  of  the 
patent,  similar  guides  made  crooked  by  a  broken  line.  But 
the  Supreme  Court  held  this  change  of  form  not  to  avoid 
infringement,  saying  that  a  curve  is  often  treated  even  in 
mathematical  science  as  constituting  a  succession  of  very 
short  straight  lines,  or  as  one  broken  line  constantly  chang- 
ing its  direction. 

§  366.  Morey  v.  Lockwood,2  was  a  case  in  which  the  bill 
was  based  on  the  patent  for  the  Davidson  syringe  ;  an  inven- 
tion which  furnishes  a  good  illustration  of  one  of  the  rules 
which  relate  to  infringement,  as  well  as  of  one  of  those 
which  relate  to  novelty.  In  it  the  bulb  was  placed  in  an 
axial  line  with  two  flexible  tubes,  and  received  fluid  at 
one  of  its  ends,  from  one  of  those  tubes,  and  discharged  the 
same,  from  its  other  end,  into  and  through  the  other  of  those 
tubes.  The  Supreme  Court  held  the  patent  to  have  been 
infringed  by  the  Richardson  syringe,  in  which  the  bulb  was 


1  Ives  v.  Hamilton,  92  U.  S.  431,          2  Morey  v.  Lockwood,  8  Wallace, 
1875.  230,  1868. 


CHAP.    XVI.]  INFRINGEMENT.  305 

placed  above  the  axial  line  of  the  two  flexible  tubes,  and 
received  the  fluid  from  one  of  those  tubes  near  the  point 
where  it  discharged  the  same  into  the  other. 

§  367.  The  American  Diamond  Bock  Boring  Co.  v.  The 
Sullivan  Machine  Co.,1  was  a  case  involving  a  patent  for  a 
rock-boring  implement,  consisting  of  a  hollow  metal  boring 
head  armed  with  diamonds,  and  which  when  moved  with  a 
combined  rotary  and  forward  motion,  bored  an  annular  hole 
into  rock,  leaving  a  central  core  to  be  subsequently  broken 
by  a  wedge  and  then  readily  removed.  The  defendant  used 
a  rock-boring  tool,  consisting  of  a  hollow  metal  boring  head, 
but  having  its  bottom  partly  plugged  so  as  to  leave  two 
holes  elsewhere  than  in  the  centre  of  the  head,  and  having 
a  convex  surface  armed  with  diamonds.  This  tool  bored  a 
simple  hole  into  rock  without  leaving  any  core  to  be  after- 
ward removed.  The  change  of  form  involved  a  modification 
of  the  action,  and  perhaps  a  modification  of  the  utility  of 
the  invention,  but  it  was  held  not  to  avoid  infringement  of  a 
claim  which  did  not  mention  the  annular  form  of  the  imple- 
ment. 

§  368.  Elizabeth  v.  Pavement  Co.2  was  a  case  based  on  the 
Nicholson  pavement  patent.  That  pavement  consisted 
primarily  of  rows  of  parallel-sided  wood  blocks,  set  endwise, 
on  a  continuous  foundation,  the  rows  being  separated  by 
parallel-sided  strips  of  board,  set  edgewise  between  them, 
and  resting  on  the  same  foundation,  and  about  half  as  wide 
as  the  blocks  were  long.  The  defendant  made  a  pavement 
differing  from  the  Nicholson  in  nothing,  except  that  the 
sides  of  the  strips  were  not  parallel  with  each  other,  the 
strips  being  thicker  at  the  top  than  at  the  bottom  edge,  and 
except  that  the  upper  angles  of  the  strips  were  let  into 
corresponding  notches  cut  in  the  sides  of  the  blocks. 
The  Supreme  Court  held  that  though  this  change  in  the 
form  of  the  blocks  and  of  the  strips  might  constitute  an 


1  American  Diamond  Rock    Bor-         2  Elizabeth®.  Pavement  Co. 97  U. 
ing  Co.  v.  Sullivan  Machine  Co.  14      S.  137,  1877. 
Blatch.  119,  1877. 


306  INFBINGEMENT.  [CHAP.   XVI. 

improvement  in  point  of  utility,  it  did  not  operate  to  avoid 
infringement. 

§  369.  Patents  for  compositions  of  matter  give  rise  to 
questions  of  infringement  somewhat  peculiar  to  themselves. 
Infringement  depends,  in  such  cases,  upon  sameness  or 
equivalence  of  ingredients,  and  upon  substantial  sameness 
of  the  proportions  of  those  ingredients.  Omission  of  one 
or  more  of  the  ingredients,  of  a  patented  composition  of 
matter  avoids  infringement,  as  truly  as  omission  of  one  of 
its  parts  avoids  infringement  of  a  patent  for  a  combination 
of  mechanical  devices.1  Addition  to  a  patented  composition 
of  matter,  of  an  ingredient  which  the  patent  purposely 
avoided,  and  which  when  added  substantially  changes  the 
character  of  the  composition,  also  avoids  infringement.2 
But  an  addition  which  results  in  no  substantial  change  of 
character,  and  which  was  made  merely  for  the  purpose  of 
an  attempt  to  evade  the  patent,  will  not  have  that  effect.3 

§  370.  Substitution  of  one  equivalent  for  another,  in  a 
patented  composition  of  matter,  is  generally  as  ineffectual 
to  avoid  infringement  as  is  like  substitution  in  a  machine. 
An  equivalent  for  one  ingredient  of  a  patented  composition 
of  matter  is  anything  which  in  that  composition  performs 
the  same  function  as  that  ingredient.4  In  the  case  cited,  it 
was  held  that  chloride  of  zinc  in  solution,  was  an  equivalent 
of  common  dry  salt,  in  the  composition  of  matter  covered 
by  the  patent  at  bar,  "  because  in  the  process  of  manufacture 
they  practically  produce  the  same  results."  No  attention 
was  given  to  the  queston  whether  they  produced  that  result 
in  substantially  the  same  way.  So  also  the  Supreme  Court 
has  held  that  the  term  "  equivalent "  means  "  equally  good  " 
when  it  refers  to  the  ingredients  of  compositions  of  matter.5 
Where  the  composition  of  matter  involved,  is  a  compound 
of  metals,  an  equivalent  of  either  of  those,  is  another  metal 

1  Otley  v.  Watkins,  36  Fed.  Rep.      1853. 

324,  1888.  4  Woodward  v.  Morrison,   1  Hol- 

2  Byam  v.  Eddy,  2  Blatch.  521,      mes,  131, 1872. 

1853.  5  Tyler  v.    Boston,    7    Wallace, 

3  Rich  v.  Lippincott,  2  Fisher,  6,      330,  1868. 


CHAP.   XVI.]  INFRINGEMENT.  307 

having  similar  properties,  and  producing  substantially  the 
same  effect  in  that  composition.1  And  a  substitute  is  not 
less  than  an  equivalent,  because  it  is  derived  from  a  differ- 
ent source  than  that  for  which  it  is  a  substitute,  or  because 
the  patentee  had  no  knowledge  of  it  when  he  received  his 
patent.8 

§  371.  A  substituted  ingredient  may  perform  the  required 
fuction  better  than  the  patented  ingredient,  and  may  per- 
form that  function  in  a  somewhat  different  manner,  and 
still  be  an  equivalent  for  the  latter.3  In  the  case  cited  the 
patent  covered  a  compound  of  nitro-glycerine  and  absorbent 
matter,  of  which  infusorial  earth  was  stated  to  be  the  pre- 
ferred variety.  The  absorbent  matter,  when  mixed  with 
three  times  its  weight  in  nitro-glycerine,  absorbed  the  whole, 
and  still  retained  the  form  of  a  powder.  This  compound 
made  dynamite.  The  defendant's  compound  consisted  of 
nitro-glycerine  and  mica  scales  mixed  in  nearly  equal  pro- 
portions, the  mica  scales  not  absorbing  the  nitro-glycerine, 
but  merely  holding  it  in  suspension  upon  their  surfaces. 
This  compound  was  called  mica  powder.  Its  use  at  the 
Hoosic  Tunnel  demonstrated  its  superiority  over  dynamite, 
in  point  of  efficiency,  economy,  and  safety ;  and  there  is 
evidently  a  difference  between  a  powder  which  absorbs  a 
liquid  as  in  minute  capillary  tubes,  and  one  which  does  not 
absorb,  but  which  carries  a  liquid  upon  the  surfaces  of  its 
particles.  But  notwithstanding  these  differences,  Judge 
SHEPLKY,  in  an  accomplished  opinion,  held  the  mica  powder 
to  infringe  the  dynamite  patent.  So  also,  in  a  later  case  on 
the  same  patent,4  the  same  judge  held  a  certain  gunpowder 
to  be  an  equivalent  of  the  infusorial  earth,  because  it  per- 
formed every  function  of  the  latter  substance,  though  it 
also  performed  the  additional  function,  at  the  time  of 
the  explosion  of  the  compound,  of  co-operating  with  the 

1  Matthews  v.   Skates,  1  Fisher,  Mowbray,    2    Bann.   &    Ard.    447, 
609,  1860.  1876. 

2  Standard  Paint  Co.  ®.  Bird,  65  4  Atlantic  Giant  Powder  Co.  t> 
Fed.  Rep.  511,  1894.  Goodyear,    3    Bann.    &   Ard.   161, 

3  Atlantic  Giant  Powder  Co.  0.  1877. 


308  INFRINGEMENT.  [CHAP.    XVI. 

nitre-glycerine  in  rending  the  rock,  instead  of  remaining,  like 
infusorial  earth,  an  inert  substance.  The  doctrine  which 
results  from  this  case  is  that  one  ingredient  is  an  equivalent 
of  another  in  the  composition  of  matter,  if  it  performs  the 
same  function,  even  though  it  also  performs  another  func- 
tion, which  that  other  is  wholly  incompetent  to  accomplish. 

§  372.  When  a  patent  expressly  states  that  the  composi- 
tion of  matter  which  it  covers,  does  not  include  a  specified 
ingredient  of  similar  compositions,  the  substitution  of  that 
ingredient  for  one  of  those  covered  by  the  patent,  is  enough 
to  avoid  infringement,  even  though  the  two  ingredients  per- 
form that  same  function  in  that  composition  of  matter.  But 
this  does  not  amount  to  saying  that  the  two  things  are  not 
equivalents.  It  merely  amounts  to  the  doctrine  that  a  pat- 
entee may  disclaim  a  particular  equivalent  if  he  chooses.1 
And  where  a  particular  construction  is  disclaimed  that  dis- 
claimer is  binding  even  if  it  was  unnecessary.2 

§  373.  Changes  of  the  proportions  of  the  ingredients  of 
a  composition  of  matter  will  not  avoid  infringement  of  a 
patent  for  such  a  composition,  where  those  changes  do  not 
affect  its  essential  character  in  any  way  more  important 
than  to  increase  its  bulk  more  than  they  increase  its  cost.3 

§  374.  The  doctrines  of  the  last  five  sections  appear  to  be 
applicable  to  compositions  of  matter  in  general,  whether 
they  consist  of  chemical  unions,  or  of  mechanical  mixtures, 
or  of  metal  amalgams.  Jurisprudence  will  doubtless  follow 
science,  if  science  hereafter  shows  any  reason  for  distinguish- 
ing between  the  different  classes  of  compositions  of  matter 
in  respect  of  questions  of  infringement ;  but  no  such  dis- 
tinctions are  yet  traceable  in  the  adjudicated  cases. 

§  375.  A  design  patent  is  infringed  by  any  design  which, 
to  general  observers  interested  in  the  subject,  or  to  pur- 
chasers of  things  of  similar  design,  has  the  same  appearance 


1  Byam  v.   Farr,    1   Curtis,    260,       112  U.  S.  624,  1884. 

1852.  3  Eastman  «.  Hinckel,  5  Bann.  & 

2  Cartridge  Co.  v.  Cartridge  Co.      Ard.  1,  1879. 


CHAP.    XVI.]  INFRINGEMENT.  .  309 

as  that  of  the  design  covered  by  the  patent,1  but  no 
other.2  The  fact  that  an  analysis  of  two  forms  of  design 
discloses  differences  between  them,  is  therefore  insufficient 
to  show  lack  of  that  substantial  identity  of  appearance, 
which  constitutes  infringement.  Such  a  question  of  iden- 
tity is  to  be  decided  on  the  basis  of  the  opinions  of 
average  observers,  and  not  upon  the  basis  of  the  opinions 
of  experts. 

§  376.  The  comparative  utility  of  the  plaintiff's  and  the 
defendant's  process,  machine,  manufacture,  or  composition 
of  matter,  is  not  alone  a  criterion  of  infringement ;  because 
the  observed  superiority  of  one  over  the  other  may  have 
arisen  from  superiority  of  the  materials  or  of  the  workman- 
ship used  in  constructing  the  specimens  under  inspection. 
Indeed  it  has  been  held  that  the  superiority  or  inferiority 
of  utility  in  a  defendant's  machine,  does  not  necessarily 
import  non-infringement,  even  where  it  can  be  traced  to 
slight  differences  in  mode  of  operation.3  No  man  is  per- 
mitted to  evade  a  patent  by  simply  constructing  the 
patented  thing  so  imperfectly  that  its  utility  is  diminished.4 
On  the  other  hand,  a  defendant's  machine  may  be  better 
than  that  covered  by  the  patent  in  suit ;  but  if  that  superi- 
ority resulted  from  some  addition  to  the  latter,  it  will  have 
no  tendency  to  avoid  infringement.5  Nor  is  infringement 
avoided  by  the  fact  that  the  defendant  constructed  and  used 
his  machine  to  produce  one  of  the  simpler  of  the  forms  of 


1  Gorham  v.  White,  14  Wallace,  Jersey  Rubber  Co.  53  Fed.  Rep.  815, 
528,  1871;  Perry  v.  Starrett,  3  Bann.  1893. 

&  Ard.  485,  1878;  Dryfoos  v.  Fried-  3  Waterbury  Brass  Co.  v.  Miller, 

man,  18  Fed.  Rep.  824,  1884;  Tom-  9  Blatch.  77,  1871;  Shaver  v.   Mfg. 

kinson  «.  Mfg.  Co.  23  Fed.  Rep.  895,  Co.  30  Fed.  Rep.  72,  1887. 

1884;  Redway  v.  Ohio  Stove  Co.  38  4  Chicago    Fruit    House    Co.   v. 

Fed.  Rep.   584,   1889;  Sutro  Bros.  Busch,  2  Bissell,  472, 1871;  Roberts 

Braid  Co.  ®.  Schloss,  44  Fed.  Rep.  v.  Harnden,  2  Cliff.  506,  1865. 

357, 1890;  Macbeth  v.   Gillinder,  54  6  Pitts  v.  Wemple,  1  Bissell,  87, 

Fed.  Rep.  172,  1891;  Smith  o.  Stew-  1855;  Carter  v.   Baker,   1   Sawyer, 

art,  55  Fed.  Rep.  483,  1893.  512,  1871. 

2  New  York  Belting  Co.  v.  New 


310  INFEINGEMENT.  [CHAP.    XVI. 

things  produced  by  the  machine  of  the  plaintiff,  and  was 
thus  enabled  to  produce  a  larger  number  in  an  equal  space 
of  time.1  The  superiority  or  inferiority  of  a  defendant's 
process,  machine,  manufacture,  or  composition  of  matter, 
as  compared  with  that  covered  by  a  patent  upon  which  he 
is  sued,  can  generally  be  traced  to  its  cause.  When  that 
can  be  done,  attention  should  be  taken  from  the  difference 
in  utility,  to  the  cause  of  that  difference.  Non-infringe- 
ment will  result  if  that  cause  is  such  a  difference  in  function, 
mode  of  operation,  or  character  of  construction,  as  is  of 
itself  sufficient  to  justify  that  conclusion.  In  some  cases, 
however,  it  may  not  be  possible  to  ascertain  the  cause  of  the 
observed  difference  of  utility  between  two  inventions,  or 
to  detect  the  existence  of  any  such  cause  otherwise  than  by 
its  effects.  In  such  a  case,  a  decided  difference  of  utility 
is  evidence  tending  to  show  substantial  difference  between 
the  characters  of  the  two  inventions.2  When  evidence  of 
difference  of  utility  between  a  plaintiff's  invention  and  a 
defendant's  doings,  is  introduced  on  an  issue  of  infringe- 
ment, it  must  be  considered  only  in  connection  with  all  the 
other  evidence  upon  that  subject.3  If  considered  alone,  it 
is  likely  to  mislead,  because  difference  of  utility  often 
springs  from  causes  which  do  not  constitute  substantial 
difference  of  invention. 

§  377.  To  constitute  an  infringement  of  a  patent,  it  is  not 
necessary  that  the  infringer  should  have  known  of  the 
existence  of  the  patent  at  the  time  he  infringed  it ; 4  or, 
knowing  of  its  existence,  it  is  not  necessary  that  he  should 
have  known  his  doings  to  constitute  an  infringement.5 


1  Blanchard  v.  Beers,  2  Blatch.  Brake  Shoe  Co.  «.  Mfg.  Co.  19  Fed. 

430,  1852.  Rep.  520,  1884;  Royer  «.  Coupe,  29 

a  Many  v.  Sizer,  1  Fisher  27,  Fed.  Rep.  361,  1886;  Bate  Refriger- 

1849.  ating  Co.  v.  Gillett,  31  Fed.  Rep. 

3  Singer  v.  Walmsley,   1   Fisher,  815,  1887. 

585,  1860.  5  Parker  v.  Hulme,  1  Fisher,  54 

4  Parker  «.  Haworth,  4  McLean,  1849;  Norton  v.  Automatic  Can  Co. 
373,   1848;  Matthews  «.   Skates,   1  57  Fed.  Rep.  933,  1993. 

Fisher,    608,    1860;    National    Car 


CHAP.   XVI.]  INFRINGEMENT.  311 

And  infringement  is  not  averted  by  the  fact  that  the  infringer 
contrived  his  own  process,  machine,  manufacture,  or  com- 
position of  matter,  as  the  case  may  be,  withdut  any  knowl- 
edge of  the  patent  infringed  thereby.1 

i  United  States  v.  Berdan  Fire  Arms  Co.  156  U.  S.  566,  1895. 


CHAPTEE  XVII. 


COURTS,  PARTIES  AND  CAUSES. 


878.  Introductory  explanation. 

379.  Jurisdiction  of  United  States 
courts  of  first  resort  in  patent 
cases. 

380.  Non  -  jurisdiction     of     State 
courts  in  patent  cases. 

388.  Jurisdiction  of    State    courts 
over  controversies  growing  out 
contracts    relevant     to     pat- 
ents. 

389.  Jurisdiction      of       individual 
United  States  courts  of  first 
resort  in  patent  cases. 

390.  Qualifications  of  the  rule  of 
the  last  section. 

391.  Jurisdiction  of  the  Court  of 
Claims. 

392.  Absence    of     Jurisdiction    of 
the  Court  of  Claims  over  causes 
of  action  based  on  unauthor- 
ized making,  using,  or  selling 
by  the  United  States  Govern- 
ment of  specimens  of  a  pat- 
ented process  or  thing. 

393.  Presence    of    jurisdiction    of 
United  States  Circuit  Courts 
over  actions  brought  against 
agents  of  the  United  States 
Government,    and    based    on 
unauthorized    making,   using, 
or  selling,  by  those  agents,  on 
behalf  of  the  Government,  of 
specimens  of  a -patented  pro- 
cess or  thing. 

394.  Who    may  be  a  plaintiff   or 
complainant  in  a  patent  action. 


395.  Who  may  be  plaintiff  or  com- 
plainant in  an  action  based  on 
an  assigned  accrued  right  of 
action  for  infringement. 

396.  Executors  and  administrators 
as  plaintiffs  and  complainants. 

397.  Assignees    of     executors    or 
administrators     as     plaintiffs 
and  complainants. 

398.  Attorneys  in  fact  cannot   be 
nominal  plaintiffs  or  complain- 
ants. 

399.  Owners  in  common  as  joint 
plaintiffs  or  complainants. 

400.  Licensees  cannot  be  nominal 
plaintiffs,    nor   sole    nominal 
complainants. 

401.  Who  may  be  made  a  defend- 
ant in  a  patent  action. 

402.  Minors,  married  women,  and 
lunatics  as  defendants. 

403.  Agents,  salesmen,  and  employ- 
ees as  defendants. 

404.  Employers  as  defendants. 

405.  Persons    as    defendants   who 
have  caused  others  to  infringe. 

406.  Joint  infringers  as  defendants. 

407.  What   facts    constitute    joint 
infringement. 

408.  Partners  as  defendants. 

409.  Private  corporations  as  defend- 
ants. 

410.  Officers,  directors,  and  stock- 
holders   of    corporations    as 
defendants. 

411.  The  same  subject  continued. 

312 


CHAP.   XVII.]  COURTS,   PARTIES   AND   CAUSES. 


313 


412.  Stockholders  of  corporations. 

413.  Officers  of  corporations. 
414    Directors  of  corporations. 

415.  Statutory  liability  of  officers, 
directors,  and  stockholders  of 
corporations. 

416.  Consolidated  corporations  as 


defendants  in  actions  based  on 
infringements  committed  by 
their  constituent  corporations. 
417.  Causes  of  action  based  on  a 
plurality  of  patents  or  on  both 
terms  of  an  extended-patent,  or 
on  a  patent  and  a  trade-mark. 


§  378.  THE  foregoing  part  of  this  text-book  treats  of  the 
rights  of  inventors  and  patentees,  and  of  their  assignees, 
grantees,  licensees,  and  legal  representatives;  and  also 
treats  of  the  wrongs  which  are  committed  when  those  rights 
are  infringed.  The  remaining  part  explains  the  remedies 
which  may  be  invoked,  sometimes  to  prevent,  and  some- 
times to  repair  such  wrongs  of  infringement.  The  present 
chapter  is  devoted  to  the  courts  which  may  originally 
administer  those  remedies;  and  to  the  parties  who  may 
invoke  them,  and  against  whom  they  may  be  invoked ;  and 
to  the  causes  of  action  which  justify  patent  litigation  between 
those  parties  in  those  courts. 

§  379.  The  Circuit  Courts  of  the  United  States  have  origi- 
nal jurisdiction,  regardless  of  the  amount  involved,  of  all 
suits  at  law  or  in  equity,  arising  under  the  patent  laws  of 
the  United  States.1  The  same  jurisdiction  belongs  also  to 
the  District  Courts  of  the  Territories  of  the  United  States,2 
and  to  the  Supreme  Court  of  the  District  of  Columbia.3 

§  380.  Whether  State  courts  have  any  jurisdiction  of 
actions  for  infringements  of  patents  was  a  question  which, 
under  the  Revised  Statutes  of  1874,  was  clearly  answerable 
in  the  negative.4  But  in  1875  Congress  enacted  a  statute 
which  provided :  "  That  the  Circuit  Courts  of  the  United 
States  shall  have  original  cognizance,  concurrent  with  the 
courts  of  the  several  States,  of  all  suits  of  a  civil  nature  at 


1  Revised  Statutes,  Section  629; 
Miller-Magee  Co.  v.  Carpenter,  34 
Fed.  Rep.  484, 1888. 

2  Revised  Statutes,  Section  1910, 
and  Section  1911,  as  amended  June 
29,  1876, 19  Statutes  at  Large,  Ch. 


154,  p.  62. 

3  Sections  760  and  764  of  the  Re- 
vised Statutes  relating  to  the  Dis- 
trict   of    Columbia;     Cochrane   v. 
Deener,  94  U.  S.  782,  1876. 

4  Revised  Statutes,  Section  711. 


314  COURTS,    PARTIES   AND   CAUSES.  [CHAP.  XVII. 

common  law  or  in  equity,  where  the  matter  in  dispute 
exceeds,  exclusive  of  costs,  the  sum  or  value  of  five  hundred 
dollars,  and  arising  under  the  Constitution  or  laws  of  the 
United  States." l  This  statute  of  1875  appeared  to  assume 
that,  in  the  absence  of  congressional  prohibition,  the  State 
courts  would  inherently  have  concurrent  jurisdiction  with 
the  Federal  courts  of  all  suits  of  a  civil  nature,  at  common 
law  or  in  equity,  arising  under  the  Constitution  or  laws  of 
the  United  States ;  and  it  seemed  to  remove  the  prohibition 
contained  in  the  Revised  Statutes.  Accordingly,  in  the 
former  editions  of  this  book,  Sections  381  to  387  were 
devoted  to  the  great  question  whether,  in  the  absence  of 
congressional  prohibition,  State  courts  would  have  jurisdic- 
tion of  civil  actions  arising  under  the  Constitution  or  laws 
of  the  United  States.  In  those  sections  it  was  shown  that 
ALEXANDER  HAMILTON  and  Justice  WASHINGTON  held  the 
affirmative  of  that  question,  while  Justice  STORY,  Chancellor 
KENT-,  and  Justice  FIELD  held  the  negative ;  and  that  the 
Supreme  Court  had  never  decided  the  question ;  but  that 
the  strongest  relevant  reasons  supported  the  negative  opin- 
ion. But,  independent  of  that  great  question,  the  Supreme 
Court  has  now  decided  that  the  statute  of  1875,  as  amended 
in  1887  and  1888,  does  not  affect  the  jurisdiction  granted  by 
earlier  statutes  to  any  court  of  the  United  States  over  specified 
cases  arising  under  the  Constitution  and  laws  of  the  United 
States ;  and  therefore  the  later  statute  does  not  apply  to  any 
case  arising  under  the  patent  laws  of  the  United  States.2 
Thus  it  is  now  established  that  State  courts  have  no  juris- 
diction of  such  cases.  And  it  accordingly  has  been  so  said 
by  several  Federal  judges,3  and  by  several  State  courts.4 


1 18  Statutes  at  Large,  Part  3,  317,  ig95;    Hupfeld  v.  Automaton 

Ch.  137,  Section  1,  p.  470.  piano  Co.  66  Fed.  Rep.  789,  1895. 

2/72,  re  Hohorst,   150  U.  S.  661,          4  Continental   Store  Service  Co. 

1893.  „.    Clark,    100    N.    Y.    370,    1886; 

3  White  «.  Rankin,  144  U.  S.  636,  Waterman  t>.  Shipman,  130  N.  Y. 

1892;  Myers®  Cunningham. 44 Fed.  308,  Ib91;  Havana  Press  Drill  Co. 

Rep.  .347,  1890;  Elgin  Wind  Power  v.  Ashurst,  148  111.  137,  1893. 
&  Pump  Co.  v.  Nichols,  65  Fed.  Rep. 


CHAP.    XVII.J  COUKTS,    PARTIES   AND   CAUSES.  315 

§  388.  Actions  brought  to  enforce  contracts  between 
private  parties,  relevant  to  patent  rights,  are  not  actions 
arising  under  the  patent  laws  of  the  United  States ;  and 
therefore  are  not  cognizable  as  such  in  the  United  States 
courts.1  And  actions  to  set  aside  such  contracts  fall  in  the 
same  category.2  These  rules  of  law  are  well  established, 
and  are  unchallenged.  But  a  majority  of  the  Supreme  Court 
has  gone  further,  and  in  spite  of  a  vigorous  dissent  from  'the 
minority,  has  held  another  doctrine  which  is  as  follows. 
Where  a  complainant  files  a  bill,  in  which  he  states  a  patent 
right,  and  states  its  use  by  the  defendant ;  and,  in  a  charg- 
ing part,  recites  the  particulars  of  an  alleged  license  claimed 
by  the  defendant  to  be  a  justification  of  that  use,  and  avers 
that  there  is  no  such  license  in  existence,  and  prays  for  an 
injunction  and  an  account  of  infringer's  profits;  and  where 
the  defendant  files  an  answer,  admitting  the  patent  right, 
and  admitting  the  use,  and  defending  only  on  the  ground 
of  the  alleged  license ;  then  the  action  is  not  one  arising 
under  the  patent  laws  of  the  United  States.3  But  there  is 
no  warrant  for  pressing  that  conclusion  any  further  than  it 
necessarily  goes ;  no  warrant  for  applying  its  doctrine  to 
any  case  which  lacks  any  of  the  elements  upon  which  it 
was  based. 

Where  a  complainant  files  a  bill  in  which  he  states  a 
patent  right,  and  states  its  use  by  the  defendant,  and  says 
nothing  about  any  contract  or  license,  and  prays  for  an 
injunction  and  an  account  of  infringer's  profits ;  and  where 
the  defendant  thereupon  files  an  answer  in  which  he  does 
not  traverse  any  part  of  the  bill,  but  pleads,  by  way  of  con- 
fession and  avoidance,  that  he  has  a  license  which  covers 
his  use  of  the  patent,  it  will  not  do  to  apply  the  rule  in 
Hartell  v.  Tilghman.  If  that  rule  were  applied  to  such  a 
case,  it  would  result  in  a  dismissal  of  the  bill  for  want  of 


1  Brown  v.  Shannon,  20  Howard,  3  Wilson  v.  Sandford,  10  Howard, 

56, 1857;  Albright  v.  Teas,  106  U.  101.  1850. 

S.  613,  1882;  Marsh  v.  Nichols,  140  8  Hartell  «.  Tilghman,  99  U.  8. 

U.  8.  344,  1891 .  547,  1878. 


316  COURTS,    PARTIES   AND    CAUSES.  [CHAP.  XVII. 

jurisdiction.  Then  if  the  complainant  should  file  a  new  bill 
in  a  State  court,  precisely  like  the  other,  and  if  the  defend- 
ant should  thereupon  file  an  answer  saying  nothing  about 
any  license,  but  denying  the  validity  of  the  patent,  that  suit 
would  also  have  to  be  dismissed,  because  it  would  present 
no  controversy  except  one  touching  the  validity  of  a  patent 
for  an  invention.  Any  infringer  of  a  patent  could  thus 
defeat  every  suit  based  on  his  infringement,  by  simply  mak- 
ing one  defence  in  one  court  and  another  defence  in  another 
court,  no  matter  how  weak  both  of  those  defences  might  be. 
A  consequence  so  unjust  could  not  be  tolerated ;  and  the 
Supreme  Court  has  unanimously  decided  that  where  a 
plaintiff  decides  to  sue  a  defendant  as  a  naked  infringer, 
the  Federal  courts  have  jurisdiction,  and  that  such  jurisdic- 
tion cannot  be  ousted  by  any  answer  which  the  defendant 
may  decide  to  interpose.1 

§  389.  Actions  for  infringement  of  patents,  being  transi- 
tory in  their  nature,  could  formerly  be  brought  in  any 
district  in  which  the  defendant  was  an  inhabitant  or  should 
be  found.2  But  a  statute  of  March  3,  1887,  appeared  to 
restrict  such  suits  to  the  district  in  which  the  defendant  is 
an  inhabitant  ;3  and  that  statute  was  construed  to  exempt 
corporations  from  such  suits  outside  of  the  district  or  dis- 
tricts of  the  States  in  which  they  are  respectively  incorpo- 
rated,4 though  it  was  also  held  that  a  defendant  waived  this 
restriction  and  exemption,  unless  he  invoked  it  as  promptly 
as  possible.5  But  the  Supreme  Court  has  now  decided  that 
the  clause  of  the  statute  of  March  3,  1887,  defining  the  dis- 
trict in  which  a  suit  shall  be  brought,  is  not  applicable  to 

1  White  v.  Raukin,  144  U.  S.  628,  &  Wilson  Mfg.  Co.  46  Fed.  Kep. 
1892;  Elgin  Wind  Power  and  Pump  882,  1891;  Adriance  v.  McCormick 
Co.  «.  Nichols.  65  Fed.  Rep.  217,  Mach.  Co.  55  Fed.  Rep.  287,  1892; 
1895.  National  Typewriter  Co.  v.  Pope 

2  18  Statutes  at  Large,  Part  3,  Mfg.  Co  56  Fed.  Rep.  849, 1893. 
Ch.  137,  Section  1,  p.  470.  5  McBride  v.  Plow  Co.  40  Fed. 

3  24  Statutes  at  Large,  Ch.  373.  Rep.    163,    1889;     Vermont   Farm 
p.  552.  Mach    Co.  «.  Gibson,  50  Fed.  Rep. 

4  Halstead  v.  Manning,  34  Fed.  424,  1892. 
Rep.  565,  1888;  Miller  «.  Wheeler 


CHAP.   XVII.]  COURTS,    PARTIES   AND    CAUSES.  317 

patent  cases.1  And  therefore,  actions  for  infringements  of 
patents  may  again  generally  be  brought  in  any  district  in 
which  the  defendant  is  an  inhabitant,  or  shall  be  found. 
Wherever  the  defendant  is  a  natural  person,  he  can  there- 
fore be  sued  in  any  district  wherein  he  can  be  served  with 
process ;  provided  he  is  not  decoyed  or  forced  into  that 
district  for  that  purpose,  nor  caught  there  when  attending 
court  as  a  party  or  a  witness.  But  where  the  defendant  is 
a  corporation,  the  matter  of  finding  the  defendant  is  not 
always  so  simple.  Being  intangible,  a  corporation  cannot 
be  seen  with  the  eyes,  as  a  natural  person  can.  It  exists 
ideally  throughout  the  territory  of  the  State  which  created 
it.2  It  can  be  found  wherever,  within  that  territory,  one  of 
its  officers,  directors,  or  agents  can  be  discovered.  Unless 
prohibited  by  its  charter,  or  excluded  by  local  law,  a  cor- 
poration may  transact  business  in  States  wherein  it  has  no 
corporate  existence.3  For  example,  a  Pennsylvania  corpo- 
ration may  do  business  in  New  Jersey,  and  in  the  course  of 
that  business  may  infringe  a  patent  there.  Whether,  under 
such  circumstances,  a  corporation  is  "  found  "  in  New  Jersey 
by  a  United  States  marshal  who  serves  process  upon  one 
of  its  officers  or  agents  in  that  State,  is  a  question  which 
depends  upon  New  Jersey  law,  and  one  which  that  law 
answers  in  the  affirmative.4  A  corresponding  question  is 
answered  in  the  same  way  by  the  law  of  Illinois,  though 
the  Illinois  statute  which  bears  upon  the  subject  is  general 
and  not  special,  like  that  of  New  Jersey.5  In  the  case  last 
cited,  the  business  which  the  defendant  Missouri  corpora- 
tion did  in  Illinois  included  infringement  of  the  complain- 
ant's patent.  After  that  case  was  argued,  and  before  it  was 
decided,  the  present  text  writer  argued  a  case  before  the 
same  distinguished  Judge  DRUMMOND,  in  which  still  more 


1  In  re  Hohorst,  150  U.  S.  662,  S.  378,  1877. 

1893.  *  Williams  v.  Empire  Transporta- 

2  Bank  of  Augusta  v.  Earle,  13  tion  Co.  3  Bann.  &  Ard.  533,  1878. 
Peters,  519,  1839.  6  Wilson  Packing  Co.  v.  Hunter, 

8  Ex  parte  Schollenberger,  96  U.  4  Bann.  &  Ard.  184,  1879, 


318  COURTS,    PARTIES   AND    CAUSES.  [CHAP.  XVII. 

advanced  ground  was  held  by  the  court.  In  that  case  the 
United  States  Circuit  Court  for  the  Northern  District  of 
Illinois  held  that  it  had  jurisdiction  of  a  bill,  filed  against  the 
Grand  Trunk  Railway  Co.  of  Canada,  and  based  on  infringe- 
ment committed  by  that  corporation  in  Michigan ;  service 
having  been  made  on  an  agent  of  the  corporation  in  its 
office  in  the  northern  district  of  Illinois,  although  neither 
that  agent,  nor  the  business  transacted  in  that  office,  had 
any  connection  with  the  infringement.1 

It  does  not  follow  from  either  of  the  foregoing  cases,  that 
every  corporation  is  found  wherever  one  of  its  officers  or 
agents  is  caught.  On  the  contrary,  it  is  not  possible  to  get 
jurisdiction  of  any  corporation  by  serving  process  on  even 
its  president,  unless  the  corporation  exists  under  the  laws 
of  the  State  wherein  the  service  is  made,  or  is  then  doing 
some  corporate  business  in  that  State.2  Nor  does  it  follow, 
from  anything  in  this  section,  that  every  corporation  can  be 
sued  in  the  Federal  courts  in  every  State  wherein  it  does 
business.  Whether  that  is  the  case  in  a  particular  instance, 
depends  upon  the  statute  of  the  State  in  which  the  business 
is  done.  It  is  probable  that  no  State  allows  foreign  corpor- 
ations to  do  business  within  its  territory,  without  making 
them  suable  in  its  own  courts.  In  effecting  the  latter  result, 
most  of  the  States  have  probably  used  statutory  language 
broad  enough  to  make  those  corporations  equally  suable  in 
those  Federal  courts  which  sit  within  their  boundaries. 
But  it  is  also  probable  that  some  States  have  specified  the 
particular  State  courts  in  which  foreign  corporations,  doing 
business  within  their  limits,  shall  submit  to  be  sued,  and 
have  not  used  language  broad  enough  to  cover  the 
Federal  courts.  Wherever  that  is  found  to  be  the  fact,  it  is 
an  omission  which  ought  to  be  remedied  by  the  State  legis- 
lature, for  it  is  clear  that  no  State  ought  to  permit  any 
foreign  corporation  to  come  into  its  territory,  and  infringe 
the  patents  of  its  citizens,  without  providing  that  such  a 


1  Sayles  v.  Grand  Trunk  Railway         2  Wilson  Packing  Co.  v.  Hunter, 
Co.  Manuscript,  1879.  4  Bann.  &  Ard.  187,  1879. 


CHAP.    XVII.]  COURTS,    PARTIES   AND   CAUSES.  319 

corporation  shall  consent  to  be  "  found  "  within  that  State, 
in  order  to  give  the  proper  courts  jurisdiction  to  administer 
a  remedy. 

§  390.  A  number  of  qualifications  exist  to  the  general  rule 
of  the  last  section ;  and  this  section  is  devoted  to  stating 
and  explaining  those  qualifications. 

Where  a  State  contains  more  than  one  district,  every 
patent  action  brought  in  that  State  against  a  single  defend- 
ant, who  is  an  inhabitant  of  that  State,  must  be  brought  in 
the  district  where  he  resides ;  and  where  there  are  two  or 
more  defendants  residing  in  different  districts  of  a  State, 
such  an  action,  if  brought  against  them  in  that  State,  must 
be  brought  in  one  of  those  districts.1 

Where  a  district  contains  more  than  one  division,  every 
such  action  brought  in  that  district,  against  a  single  defend- 
ant, who  is  an  inhabitant  of  the  State,  in  which  that  district 
is,  must  be  brought  in  the  division  where  he  resides;  and' 
where  there  are  two  or  more  defendants  residing  in  different 
divisions  of  a  district,  such  an  action,  if  brought  against 
them  in  that  district,  must  be  brought  in  one  of  those 
divisions.  For  this  provision  exists  in  all  of  the  various 
statutes  which  divide  sundry  of  the  judicial  districts  of  the 
United  States.  Those  districts  include  the  Northern  and 
the  Southern  of  Ohio ;  the  Northern  of  Illinois ;  the 
Eastern  and  the  Western  of  Michigan ;  the  Eastern  and  the 
Western  of  Tennessee;  the  Southern  of  Georgia;  the  Southern 
of  Mississippi  ;  the  Eastern  and  the  Western  of  Louisiana ; 
the  Western  of  Missouri ;  the  District  of  South  Dakota ;  the 
District  of  Iowa  ;  the  District  of  Minnesota;  the  District  of 
Kansas  ;  the  District  of  Montana;  and  the  District  of  Idaho. 

The  Circuit  Court  for  the  Southern  District  of  New  York 
has  no  jurisdiction  of  any  action  based  on  any  infringement 
committed  in  the  Northern  District  of  the  same  State.2  But 
it  has  been  held  in  one  case  that  where  such  a  suit  is 
brought  in  the  Southern  District,  the  court  will  proceed  to 


1  Revised  Statutes,  Section  740.         Hodge  v.  Railroad  Co.  6  Blatch.  85, 
a  Revised  Statutes,  Section  657;       1868. 


320  COURTS,  PARTIES  AND  CAUSES.     [CHAP.  XVII. 

judgment  unless  the  defendant  sets  up  the  want  of  jurisdic- 
tion in  his  pleadings.1 

§  391.  The  Court  of  Claims  is  the  tribunal  which  has 
jurisdiction  of  all  actions  brought  by  owners  of  patent 
rights  against  the  government  of  the  United  States,  for 
compensation  for  implied  licenses  to  the  government,  to 
make  and  use  patented  inventions.2  Such  suits  are  subject 
to  a  six  year  statute  of  limitation  ;  and  in  the  absence  of  an 
established  royalty  the  claimant  is  entitled  to  recover  what 
a  reasonable  royalty  for  an  express  license  would  have  been.3 

§  392.  What  remedy  a  patentee  has  when  the  government 
makes  or  uses  specimens  of  his  patented  invention  without 
his  consent,  is  a  question  which  was  long  debated.  But  it 
has  now  been  settled  that  the  Court  of  Claims  has  no  juris- 
diction of  an  infringement  suit  brought  against  the  United 
States.4 

•  §  393.  The  Court  of  Claims  having  no  jurisdiction  of  a 
case  based  upon  an  unauthorized  making  or  using  by  the 
government,  of  a  patented  invention,  it  is  important  to 
know  whether,  in  such  a  case,  an  action  will  lie  against 
those  agents  of  the  government  who  personally  committed 
the  infringement.  That  question  was  long  unsettled  ;  but 
it  has  now  been  decided  in  the  affirmative,  in  a  learned  and 
elaborate  opinion  of  Judge  COLT  ;5  and  it  is  not  probable 
that  his  conclusion  will  be  reversed  by  the  Supreme  Court, 
or  by  the  majority  of  the  Circuit  Courts  of  Appeals. 

§  394.  The  plaintiff  or  complainant  in  an  action  based  on 
an  infringement  of  a  patent  may  be  the  patentee,  or  the 
sole  assignee  of  that  patent ;  or  any  grantee  under  a  patent 
may  sue  alone,  for  any  infringement  committed  within  his 
territory.6  It  is  not  necessary  for  the  plaintiff,  in  an  action 

1  Black  «.  Thorn,  10  Blatch.   84,  6  Head  «.   Porter,  48  Fed.  Rep. 
1872.  481,  1891. 

2  United  States  v.  Palmer,  128  U.  6  Revised  Statutes,  Section  4919; 
S.  269,  1888.  Wilson  v.  Rousseau,  4  Howard,  646, 

3  United  States  v.  Berdan  Fire  1846;  Stein  v.  Goddard,  1  McAlis- 
Arms  Co.  156  U.  S.  569,  1895.  ter  82,  1856;  Siebert  Oil  Cup  Co.  v. 

4  Schillingerfl.  United  States,  155  Beggs,  32  Fed.  Rep.  790,  1887. 
U.  S.  169,  1894. 


CHAP.  XVH.]     COURTS,  PARTIES  AND  CAUSES.  321 

at  law,  to  own  any  interest  in  the  patent  at  the  time  he 
brings  his  action.  It  is  enough  if  he  was  the  patentee, 
assignee,  or  grantee  of  the  rights  infringed,  at  the  time  the 
infringement  sued  upon  was  committed.1  But  this  rule 
does  not  generally  apply  to  actions  in  equity,  for  such 
actions  are  generally  dependent  upon  an  injunction,  and  no 
injunction  can  be  granted  to  restrain  future  infringements 
of  a  patent,  on  the  suit  of  a  person  who  has  no  interest  in 
the  patent  threatened  to  be  infringed.2  Though  where  a 
complainant  owns  a  patent  infringed,  when  he  files  his  bill 
for  an  injunction  and  a  money  recovery,  jurisdiction  will 
not  lapse  when  he  assigns  the  future  of  his  patent.3 

§  395.  Actions  at  law  brought  by  assignees  or  grantees, 
for  infringements  committed  prior  to  the  time  they  obtained 
title,  must,  according  to  the  common  law,  be  brought  in  the 
name  of  the  person  who  held  the  legal  title  to  the  patent 
right  when  and  where  it  was  infringed  by  the  defendant. 
This  rule  was  not  abrogated  by  the  Federal  statutes  which 
permitted  suits  to  be  brought  by  assignees,  unless  Justice 
CLIFFORD  was  in  error  in  saying,  in  substance,  that  the 
assignees  which  were  contemplated  by  that  statute,  are 
assignees  of  patents  and  not  assignees  of  rights  of  action 
under  patents.4  But  Judge  SAGE  has  held  that  where  an 
assignment  of  a  patent,  assigns  also  rights  of  action  for  prior 
infringements  of  that  patent,  the  assignee  may  maintain  an 
action  at  law  in  his  own  name  for  those  infringements,  as 
well  as  for  subsequent  infringements  of  that  patent.5  And 
actions  in  equity,  if  maintainable  at  all  in  such  a  case,  may 
be  brought  in  the  name  of  the  assignee ;  and  such  an  action 
will  be  maintainable  where  the  suit  is  based  on  infringe- 
ments and  threatened  infringements,  committed  after  the- 
complainant  obtained  title,  as  well  as  upon  infringements 

1  Moore  v.  Marsh,  7  Wallace,  515,      505,  1891. 

1868.  *  Moore  «.  Marsh,  7  Wall.  515. 

2  Waterman  v.  Mackenzie,  138  U.      1868. 

S.  255,  1891.  6  Adams  v.  Stamping  Co.  25  Fed. 

»  New  York  Belting  Co.   «.  New      Rep.  270,  1885. 
Jersey  Rubber  Co.  47  Fed.  Rep. 


322  COURTS,    PARTIES   AND   CAUSES.  [CHAP.  XVII 

committed  before  that  event.1  An  action  in  equity  will  also 
be  maintainable  in  such  a  case,  if  the  assignor  of  the  right 
of  action  was  a  corporation,  and  has  been  dissolved  or  has 
expired;2  or  if  for  any  reason  it  is  impossible  for  the 
assignee  of  the  right  of  action  to  sue  in  the  name  of  the 
assignor.3  Where  the  assignor  is  dead  at  the  time  the 
assignee  desires  to  bring  an  action  at  law,  and  where  no 
legal  representative  of  the  assignor  exists,  or  is  likely  to 
exist  unless  the  appointment  of  one  is  obtained  for  the 
special  purpose  of  using  his  name  as  nominal  plaintiff  in 
the  assignee's  suit,  it  would  seem  no  great  stretch  of  equity 
jurisdiction  to  allow  the  assignee  to  file  a  bill  in  his  own 
name,  and  thus  avoid  the  useless  and  expensive  circuity  of 
compelling  him  first  to  secure  the  appointment  of  an  admin- 
istrator, and  then  to  bring  an  action  at  law  in  the  name  of 
the  latter.  No  principle  adverse  to  such  a  proceeding  was 
perceived  by  Chief  Justice  MARSHALL  when,  in  a  similar 
case  of  expensive  circuity  at  law,  the  more  direct  and  less 
expensive  methods  of  equity  were  invoked  before  him.4 

§  396.  Where  a  patentee,  assignee,  or  grantee,  who  was 
entitled  to  sue  for  an  infringement  of  a  patent^  died  before 
beginning  an  action  thereon,  such  an  action  may  be  brought 
by  his  executor  or  administrator,5  upon  his  fulfilling  the 
conditions  and  giving  the  guarantees  of  fidelity  and  solvency 
re'quired  by  the  law  of  the  State  wherein  the  court  is  estab- 
lished in  which  the  action  is  proposed  to  be  brought.6  But 
it  is  not  certain  that,  when  beginning  a  patent  action  in  a 
Federal  court  in  a  State  other  than  that  of  his  appointment, 

1  Dibble  v.  Augur,  7  Blatch.  86,          3  Hayward  v.  Andrews,  106  U.  S. 
1869;  Henry  t>.  Stove  Co.  2  Bann.       675,  1882. 

&  Aid.  224.  1876;  Gordon  v.  An-  4  Riddle  v.  Mandeville,  5  Cranch, 

thony,   16  Blatch.  234,  1879;  Mer-  329,  1809. 

riam  v.  Smith,  11  Fed.  Rep.  589,  5  May  v.  County  of    Logan,   30 
1882;    Shaw  «.  Lead  Co.   11  Fed.  Fed.  Rep.  253,  1887. 
Rep.   715,   1882;   Consolidated  Oil  e  Rubber  Co.  «.  Goodyear,  9  Wai- 
Well  Packer  Co.  v.  Eaton,  12  Fed.  lace,  791,  1869;  Wilkins  «.  Ellett, 
Rep.  870,  1882.  108  U.  S.   256,   1882;     Picquet   «. 

2  Lenox  <o.  Roberts,  2  Wheaton,  Swan,  3  Mason,  472,  1824. 
373,  1817. 


CHAP.  XVII.]  COURTS,   PARTIES  AND   CAUSES. 

an  executor  or  administrator  must  conform  to  the  condi- 
tions, or  give  the  guarantees,  prescribed  by  the  local  laws.1 
Whether  the  various  State  laws,  relevant  to  foreign  execu- 
tors or  administrators  suing  in  State  courts,  are  binding  in 
such  cases  as  these,  is  a  point  upon  which  there  appears  to 
be  a  conflict  of  authority.  The  cases  last  cited  appear  to 
support  the  negative  of  the  question,  while  those  cited  just 
before  seem  to  sustain  the  affirmative  view.  It  is  possible 
that  a  distinction  may  be  drawn  on  this  point  between 
actions  based  on  patents  and  actions  arising  out  of  local 
law  and  brought  into  Federal  courts  on  grounds  of  diverse 
citizenship.  If  that  distinction  is  found  to  be  important,  it 
may  lead  to  a  decision  that  executors  and  administrators 
may  begin  and  prosecute  patent  cases  in  Federal  courts  in 
States  other  than  that  of  their  appointment,  without  any 
regard  to  the  probate  or  other  analogous  laws  of  those 
States.  If  it  is  held  otherwise,  then  the  laws  of  the  States 
relevant  to  the  conditions  upon  which  foreign  executors  or 
administrators  are  permitted  to  sue  in  their  courts,  will 
require  the  attention  of  the  practitioner  in  such  cases. 
In  some  States  those  conditions  amount  to  local  pro- 
bate, and  in  others  they  amount  to  no  more  than 
the  giving  of  a  bond  for  costs.  But  whether  onerous  or 
easy,  and  whether  necessary  or  unnecessary  to  be  re- 
garded in  patent  cases,  an  omission  to  regard  them  can- 
not be  availed  of  by  a  defendant,  unless  availed  of  in  his 
pleadings.2 

§  397.  Where  an  executor  or  administrator  of  a  deceased 
patentee,  or  assignee  or  grantee  of  a  patent  right,  assigns 
that  right  to  another,  or  assigns  to  another  a  right  of  action 
for  its  infringement,  that  other  can  sue  thereon  in  any  State, 
without  any  proceedings  in  the  nature  of  local  probate, 


1  Hodge  «.  Railroad  Cos.  4  Fisher,  177,  1874. 

162,  1870;  Northwestern  Fire  Ex-  a  Rubber  Co.  v.  Goodyear,  9  Wai- 

tinguisher  Co.  v.  Philadelphia  Fire  lace,  791,  1869. 
Extinguisher  Co.  1  Bann.  <fc  Ard. 


324  COURTS,    PAETIES   AND   CAUSES.  [CHAP.  XVII. 

provided  lie  can  sue  in  his  own  name.1  Whether  he  can  sue 
in  his  own  name  will  depend  upon  whether  he  is  entitled  to 
an  injunction,  or  if  not  entitled  to  an  injunction,  it  will 
depend  upon  whether  equity  can  take  jurisdiction  on  some 
other  ground ;  or  if  not  entitled  to  sue  in  equity  at  all,  it 
will  depend  upon  whether  the  laws  of  the  particular  State 
authorize  assignees  of  rights  of  action  to  bring  actions  at 
law  in  their  own  respective  names.2 

§  398.  Patentees  and  other  persons  entitled  to  bring 
actions  for  infringements  of  patents  may  appoint  attorneys 
in  fact  to  bring  those  actions  in  the  names  of  the  appointors ; 
but  not  in  the  names  of  the  attorneys  in  fact.3 

§  399.  Owners  in  common  of  patent  rights  must  sue  jointly 
for  their  infringement,  or  the  defendant  may  plead  in  abate- 
ment or  demur.4  This  rule  applies  where  a  patentee  has 
assigned  an  undivided  part  of  his  patent,5  and  also  to  cases 
where  the  owner  of  the  patent  has  granted  an  undivided 
interest  therein,  in  that  part  of  the  territory  of  the  United 
States  wherein  the  infringement  sued  upon  was  committed. 
In  the  first  of  these  cases  the  action  must  be  brought  by 
the  patentee  and  assignee  jointly;  and  in  the  other  case  it 
must  be  jointly  brought  by  the  owner  of  the  patent  and  his 
grantee.  Indeed,  the  rule  necessarily  applies  to  every  case 
where  a  plurality  of  persons  own  the  undivided  interest  in 
a  patent  right,  whether  in  the  whole,  or  only  in  a  part  of 
the  territory  of  the  United  States.  And  it  has  been  held  in 
one  case,  that  the  owner  of  a  patent  right  in  a  part  of  the 
territory  of  the  United  States,  may  join  with  the  owner  of 
the  same  patent  right  in  another  part  of  that  territory,  in 


1  Harper  «.  Butler,  2  Peters,  238,  Fed.  Rep.  253,  1887. 

1829;  Trecothick  V.Austin, 4 Mason,  3  Goldsmith    «.    Collar    Co.    18 

36,  1825;  Leake  v  Gilchrist,  2  Dev-  Blatoh.  82,  1880. 

ereaux  (N.  C.),  73,  1829;   Peterson  4  Van  Orden  ®.  Nashville,  67  Fed. 

«.    Chemical  Bank,   32  N.   Y.  21,  Rep.  332,  1895. 

1865;  Riddick  «.  Moore,  65  N.  C.  5  Moore  ®.  Marsh,  7  Wallace,  515, 

382,  1871;  May  •».  County  of  Logan,  1868;  Waterman  v.  Mackenzie,  138 

30  Fed.  Rep.  253, 1887.  U.  8.  255,  1891;   Dick  v.  Struthers, 

2  May  v.   County  of   Logan,   30  25  Fed.  Rep.  104, 1885. 


CHAP.  XVII.]  COURTS,   PARTIES   AND   CAUSES.  325 

suing  for  infringement  of  the  patent  in  the  territory  of  the 
latter,  on  the  ground  that  all  the  owners  of  territorial  rights 
under  the  patent  are  interested  in  having  it  sustained.1  But 
there  is  no  occasion  for  a  person  who  has  only  an  interest 
in  the  proceeds  of  a  patent,  without  having  any  title  in  the 
patent  itself ,  to  join  in  a  suit  for  its  infringement.52 

§  400.  Licensees  under  patents  cannot  bring  actions  for 
their  infringement.3  Where  a  person  has  received  an 
exclusive  license  to  use  or  to  sell  a  patented  invention  within 
a  specified  territory,  all  actions  at  law  against  persons  who, 
without  right,  have  done  anything  covered  by  the  license, 
must  be  brought  in  the  name  of  the  owner  of  the  patent 
right,  but  generally  for  the  use  of  the  licensee;4  and  all 
actions  in  equity  must  be  brought  by  the  owner  of  the 
patent  right  and  the  exclusive  licensees  suing  together  as 
joint  complainants,5  but  the  holder  of  a  license  less  than 
exclusive  must  not  join  in  an  action  in  equity  for  an  infringe- 
ment of  the  patent  under  which  he  is  licensed,6  even  where 
the  infringement  consisted  in  making  and  selling  one  form 
of  the  patented  invention,  which  the  licensee  was  exclusively 
licensed  to  make  and  sell.7  Actions  at  law  brought  in  the 
name  of  the  owner  of  a  patent  right,  but  actually  begun  by 
an  exclusive  licensee,  may  be  maintained  by  the  latter, 
even  against  the  will  of  the  nominal  plaintiff.8  And  where 
an  exclusive  licensee  brings  an  action  in  equity  in  the 

1  Otis  Mfg.  Co.  v.  Crane  Mfg.  Co.  Chickering,  14  Fed.  Rep.  917,  1883. 
27  Fed.  Rep.  558,  1886.  4  Littlefleld  v.  Perry,  21  Wallace, 

2  Bogart  v.  Hinds,  25  Fed.  Rep.  223,  1874;  Goodyear  v.   McBurney, 
485,  1885.  3  Blatch.  32,  1853. 

3  Gayler  v.   Wilder,    10  Howard  5  Waterman  v.  Mackenzie,  138  U. 
477,    1850;    Paper-Bag  cases,    105  S.  255,  1891;  Hammond  v.  Hunt,  4 
U.  8,766,1881;  Blanchard  v.   Eld-  Bann.   &  Ard.  113,  1879;  Huber  v. 
ridge,    1    Wallace   Jr.     337,  1849;  Sanitary  Depot,  34  Fed.   Rep.  752, 
Potter  v.   Holland,  4  Blatch.  206.  1888. 

1858;  Sanford  «.  Messer,  1  Holmes,  tf  Blair  v.  Lippincott  Glass  Co.  52 

149,   1872;    Nelson    v.   McMann,   4  Fed.  Rep.  226,  1892. 

Bann.  &  Ard.  203,  1879;  Gamewell  7  Pope  Mfg.  Co.  v.  Clark,  46  Fed. 

Telegraph  Co.  v.  Brooklyn,  14  Fed.  Rep.  792,  1891. 

Rep.  255,  1882;  Ingalls  v.  Tice,  14  8  Goodyear  «.  Bishop,  4  Blatch. 

Fed.    Rep.    297,   1882;    Wilson    9.  438.  1860. 


326  COURTS,  PARTIES  AND   CAUSES.  [CHAP.  XVII. 

name  of  himself  and  the  owner  of  the  patent  right,  that 
action  may  be  maintained  without  the  co-operation  and 
even  against  the  objection  of  the  latter.1 

Where  the  owner  of  a  patent  is  himself  an  infringer  of  a 
licensee's  exclusive  right  to  use  or  to  sell  the  invention 
covered  thereby,  no  action  at  law  can  remedy  the  wrong. 
The  licensee  cannot  bring  such  an  action  in  his  own  name 
in  that  case,  any  more  than  in  another ;  and  he  cannot  sue 
in  the  name  of  the  wrong-doer,  for  he  would  thus  make  the 
latter  both  plaintiff  and  defendant.  Such  a  state  of  facts 
constitutes  such  an  impediment  to  an  action  at  law  as 
authorizes  the  licensee  to  sue  the  owner  of  a  patent  in  a 
court  of  equity.2  And  a  stranger  to  the  title  who  joined  in 
the  infringement,  may  be  joined  with  the  owner  as  a  defend- 
ant.3 

Where  an  exclusive  licensee,  who  pays  royalties  in  pro- 
portion- to  the  extent  of  his  use  or  his  sales  of  the  patented 
invention,  allows  infringers  to  use  or  to  sell  that  invention 
without  interference  from  him,  the  owner  of  the  patent 
right  may  sue  those  infringers  in  his  own  name  and  for  his 
own  use.4 

§  401.  The  defendant  in  an  action  for  an  infringement  of 
a  patent  may  be  a  natural  person.  A  private  corporation 
may  also  be  held  liable  as  defendant  in  such  an  action.5 
And  a  receiver,  appointed  by  a  State  court  for  an  infring- 
ing corporation,  may  be  sued  for  its  infringement  or  for  his 
own  infringement  as  receiver,  without  the  consent  of  the 
State  court  which  appointed  him.6  Among  public  corpora- 

1  Brush-Swan  Electric  Light  Co .  McCormick  Mach.  Co.  55  Fed.  Rep. 
v.  Electric  Co.   48  Fed.  Rep.  224,  290,  1893;  56  Fed.  Rep.  918, 1893. 
1891;  Brush  Electric  Co.  «.  Electric        3  Waterman  v.  Shipman,  55  Fed. 
Co.  of  San .  Jose,  49  Fed.  Rep.  73,  Rep.  986,  1893. 

1892;  Brush  Electric  Co.  v.  Calif  or-  4  Still  v.   Reading,  20   Off.   Gaz. 

nia  Electric  Co.  52  Fed.  Rep.  945,  1026, 1881. 

1892.  5  York  &  Maryland  Line  Railroad 

2  Littlefield  «.    Perry,  21  "Wall.  Co.    v.    Winans,    17    Howard,    30, 
223,  1874;  Root  «.  Railway  Co.  105  1854. 

U.  8.  216,  1881;  Rapp  v>.  Kelling,  6  Hupfeld®.  Automaton  Piano  Co. 
41  Fed.  Rep.  792,  1890;  Adriance  «.  66  Fed.  Rep.  789,  1895.- 


CHAP.  XVII.]  COURTS,   PARTIES  AND   CAUSES.  327 

tions,  the  liability  of  a  city  for  infringing  a  patent  has  been 
affirmed,1  and  that  of  a  county  has  sometimes  been  affirmed 
and  sometimes  denied.2  If  such  a  distinction  exists  between 
a  city  and  a  county,  it  is  founded  on  the  fact  that  cities  are 
created  and  exist  mainly  for  the  special  use  of  the  people 
who  compose  them;  while  counties  are  subdivisions  of 
States,  made  for  the  purposes  of  political  organization, 
and  civil  and  judicial  administration.3  The  same  reasons, 
if  valid,  would  indicate  that  organized  villages  are  gener- 
ally liable  for  infringements,  while  ordinary  townships  are 
not.  The  general  rule  on  the  subject  would  then  appear  to 
be  that  cities  and  villages  are  liable  for  infringements  of 
patents,  unless  the  charters  or  statutes  which  created  or 
which  regulate  them  otherwise  require  or  provide,  while 
counties  and  townships  are  not  so  liable  unless  they  are 
made  so  by  the  legislative  power  which  called  them  into 
being.4  School  districts  probably  fall  in  the  .some  catagory 
as  townships  in  respect  to  this  sort  of  liability.5  No  State 
can  be  sued  for  any  infringement  of  a  patent.6 

§  402.  Natural  persons  cannot  escape  liability  for  their 
infringements  of  patents  on  the  ground  that  they  are  minors, 
married  women,  or  lunatics.7  A  minor  is  not  less  liable  to 
an  action  because  the  act  of  infringement  was  done  at  the 
command  of  his  father ; 8  but  if  a  married  woman  commits 
an  infringement  in  the  presence  of  her  husband,  she  is  not 


1  Bliss  v.  Brooklyn,  4 Fisher,  596,  sionersof  Hamilton  County  «.  Mig- 
1871;  Asbestine  Mfg.  Co.  v.  Hepp,  hels,  7  Ohio  State,  118,  1857. 

39  Fed.  Rep.  326,  1889.  *  May  «.  County  of  Buchanan,  29 

2  Jacobs  v.   Hamilton  County,  4  Fed.  Rep.  473,  1886;  May «.  County 
Fisher,  81,  1862,  May  v.  County  of  of  Cass,  30  Fed.  Rep.  762,  1887. 
Mercer,    30  Fed.   Rep.    246,   1887;         5  Wilson  v.   School  District,   32 
May  «.  County  of  Juneau,  30  Fed.  New  Hampshire,  118,  1855. 

Rep.  241,  1887,  May  v.  County  of          *  Eleventh    Amendment  to  the 

Logan,  30    Fed.    Rep.    260,    1887;  Constitution  of  the  United  States. 
May  0.   County  of  Rails,  31   Fed.          7  Cooley  on  Torts,  Chapter  IV. 
Rep.  473, 1887.  8  Humphreys  ®.  Douglass.10  Ver- 

3  Ward  v.  County  of  Hartford,  12  mont,  71,  1838;  Scott  v.  Watson,  46 
Connecticut,    406,  1838;     Commis-  Maine,  362,  1859. 


328  COURTS,    PAETIES   AND   CAUSES.  [CHAP.  XVII. 

liable  to  an  action  therefor,  unless  it  can  be  shown  that  she 
did  it  without  his  influence  or  consent.1  In  the  absence  of 
such  evidence,  the  husband  is  alone  liable  for  the  torts  of 
the  wife  which  are  committed  in  his  presence  ;2  or  under 
his  direction ; 3  and  for  the  infringements  which  are  -com- 
mitted jointly  by  both.4  The  only  distinction  between  the 
liability  of  lunatics  and  of  sane  persons,  for  such  torts  as 
infringements  of  patents,  seems  to  be  that  the  former  can 
never  be  held  liable  for  more  than  actual  damages,  in  an 
action  at  law,5  or  his  actual  profits,  in  an  action  in  equity.6 

§  403.  An  agent  or  salesman  who  sells  specimens  of  a 
patented  thing  on  commission  is  liable  as  an  infringer  for 
so  doing.7  And  the  foreman  of  a  factory  is  liable  for 
infringements  done  under  his  supervision.8  But  a  mechanic 
who,  when  working  for  wages,  makes  or  uses  a  patented 
thing,  or  uses  a  patented  process,  at  the  command  of  his 
employer,  is  not  liable  to  an  action  at  law,  on  that  account,9 
though  he  may  doubtless  be  restrained  by  an  injunction 
from  continuing  such  making  or  using.10  A  decree  for  an 
account  of  profits  would  not  be  proper  in  such  a  case, 
because  a  mechanic  cannot  be  said  to  make  any  profits 
from  such  an  infringement.  Nor  would  a  decree  for  dam- 
ages be  any  more  proper  in  an  action  in  equity,  than  would 
a  judgment  for  damages  in  an  action  at  law. 

§  404.  Whoever  directs  or  requests  another  to  infringe  a 
patent,  is  himself  liable  to  an  action  for  the  resulting  infringe- 


1  Bishops  Law  of  Married  Wo-  1866;  Maltby  v.  Bobo,  14  Blatch. 
men,  Volume  2,  Section  258.  53,  1876;  Steiger  «.   Heidelberger, 

2  Bishop's  Law  of  Married  Wo-  4  Fed.  Rep.  455,   1880;  Cramer  v. 
men,  Volume  1,  Section  43.  Fry,  68  Fed.  Rep.  207,  1895. 

3  American  Bell  Telephone  Co.  8  Cahoone  Mfg.   Co.  v.  Harness 
«.    Cushman,    57    Fed.    Rep.   844,  Co.  45  Fed.  Rep.  584,  1891. 

1893.  9  Delano    o.    Scott,   Gilpin    498, 

4  Green  v.   Austin,  22  Off.  Gaz.  1834;  United  Nickel  Co.  v.  Worth- 
683,  1882.  ington,    13    Fed.  .Rep.   392,    1882; 

6  Cooley  on  Torts,  page  102.  Young  v.  Foerster,  37  Fed.  Rep. 

6  Avery  «.  Wilson,  20  Fed.  Rep.  203,  1889. 

857,  1884.  10  Goodyear  «.  Mullee,  5  Blatch. 

?  Potter  v.  Crowell,  3  Fisher.  112,  437, 1867. 


CHAP.  XVII.]  COURTS,    PARTIES   AND   CAUSES.  329 

ment,  on  the  plain  principle  that  what  one  does  by  another  he 
does  by  himself.  *  So,  also,  if  an  infringement  is  committed 
by  A.  B.  for  the  benefit  of  C.  D.,  but  without  the 
knowledge  or  authority  of  the  latter,  the  latter  will  still 
be  liable  as  an  infringer,  if  he  approves  the  tort  after  its 
commission.2  An  infringement  which  is  committed  by  an 
employee  in  the  regular  course  of  his  employer's  business 
will  also  render  the  latter  liable  to  an  action,  even  if  the 
employer  forbade  the  acts  which  constituted  the  infringe- 
ment,3 or  even  if  the  employer  did  not  know  that  such  was 
the  character  of  those  acts.4 

§  405.  It  is  a  general  principle  of  law,  that  whoever  does 
an  act  which  naturally  causes  another  to  commit  a  tort,  is 
himself  liable  to  an  action  therefor.5  The  applicability  of 
this  doctrine  to  patent  suits  is  a  subject  which  is  as  yet 
almost  wholly  uuexamined  by  the  courts.  When  so 
examined,  it  will  probably  be  found  to  have  its  limitations. 
If  A.  B.  unlawfully  makes  a  specimen  of  a  patented  thing, 
and  sells  it  to  C.  D.,  a  man  whose  business  it  is  to  use  things 
of  that  class,  there  seems  to  be  no  injustice  in  holding  the 
former  responsible,  not  only  for  his  own  illegal  making  and 
selling,  but  also  for  the  illegal  using  committed  by  the  lat- 
ter, for  that  making  and  selling  naturally  resulted  in  that 
using.  On  the  other  hand,  if  E.  F.,  a  merchant,  gives  G. 
H.,  a  manufacturer,  an  order  for  a  quantity  of  articles  which 
may  be  made  either  with  or  without  a  particular  patented 
machine,  and  if  G.  H.  makes  those  articles  with  that  machine 
because  he  ordinarily  and  naturally  uses  that  machine  for 
such  purposes,  it  seems  to  be  clear  that  E.  F.  is  not  liable 


1  Green  v.  Gardner,  22  Off.   Gaz.  4  Wooster  v.  Marks,  17  Blatch. 
683,  1882.  368,  1879;    McKnight  «.  McNiece, 

2  See  Judson  «.  Cook,  11  Barbour  64  Fed.  Rep.  116,  1894. 

(N.  Y.),  642,  1852;  Allred  «.  Bray,  »  Guille  v.  Swan,  19  Johiison  (N. 

41  Missouri,  484,  1867.  Y.),  381, 1822;  Brooks®.  Ashburn,9 

3  See    Philadelphia    &   Reading  Georgia,  297,  1851;  Lewis  v.  Johns, 
Railroad  Co.  v.  Derby,  14  Howard,  34  California,  629,   1868;  Smith  v. 
468,  1852.  Felt,  50  Barbour  (N.  Y.),  612,  1868. 


330  COURTS,    PARTIES   AND    CAUSES.  [CHAP.  XVII. 

for  that  unlawful  making.1  But  if  I.  J.  unlawfully  makes  a 
patented  machine  and  leases  it  to  K.  L.  to  be  used,  it  seems 
right  to  hold  the  former  liable  to  an  action  for  that  use. 

§  406.  Where  several  persons  co-operate  in  any  infringe- 
ment, all  those  persons  are  of  course  liable  therefor.  In 
that,  as  in  all  cases  of  torts  for  which  several  persons  are 
liable,  all  may  be  sued  jointly,  or  any  of  them  may  be  sued 
alone.2  But  where  a  patentee  sues  one  of  several  joint 
infringers  collusively,  for  the  purpose  of  getting  a  mutual 
advantage  over  another  joint  inf ringer,  the  court,  on  learn- 
ing the  facts,  will  dismiss  the  case  3 

So,  also,  an  action  may  be  brought  against  several  joint 
defendants,  and  sustained  against  such  of  them  as  the 
evidence  shows  to  be  liable,  even  though  not  sustained 
against  all.4  Where  an  action  at  law  is  sustained  against 
several  joint  infringers,  the  judgment  will  be  entered  against 
all,  regardless  of  whether  the  benefits  of  the  infringement 
were  confined  to  part  of  them,  or  extended  to  the  whole  ;5 
though  only  one  payment  can  be  enforced  ;6  and  a  decree 
for  profits,  in  an  action  in  equity,  will  be  entered  only  against 
these  of  the  defendants  who  are  proved  to  have  actually 
realized  profits  from  the  infringement.7 

§  407.  The  facts  which  will  constitute  co-operative  joint 
infringement  fall,  when  analyzed,  into  a  large  number  of 
classes.  A  few  of  them  may  be  mentioned  in  this  section, 
but  a  much  larger  number  must  be  left  to  the  reflections  of 
the  reader,  or  to  the  development  of  litigation. 

Where  one  man  owns  and  others  operate  an  infringing 


1  Keplinger    «.    De    Young,   10  4  Reutgen  «.   Kanowrs,  1  Wash- 
Wheaton,  358,  1825;    Brown  a.  Dis-  ington,  172,  1804. 

trict  of  Columbia,   3  Mackey,  502,  5  Cooley  on  Torts,  p.  136. 

1884.  6  Jennings  v.  Dolan,  29  Fed.  Rep. 

2  Jennings  «.  Dolan,  29  Fed.  Rep.  862,  1887. 

862,  1887;  Bray  ®.  Denning,  56  Fed.  7  Elizabeth  v.   Pavement  Co.  97 

Rep.  1019,  1893.  U.    S.    140,   1877;    Featherstone  v. 

3  Ring  Refrigerator  Co. «. St. Louis  Cycle  Co.,  53  Fed.  Rep.  110,  1892. 
Ice  Mfg.  Co.  67  Fed.  Rep.  535,  1895. 


CHAP.  XVII.]  COURTS,   PARTIES   AND   CAUSES.  331 

machine,  all  are  jointly  liable  to  an  action  therefor.1  Where 
one  person  makes  and  sells  a  part  of  a  patented  combina- 
tion, and  another  person  independently  make  and  sells  the 
residue  of  that  combination,  both  intending  that  the  pur- 
chaser shall  assemble  the  parts,  and  use  the  combination, 
there  the  maker  and  seller  of  either  of  the  parts  is  liable  to 
an  action  as  infringer.2  So,  also,  where  a  person  makes  and 
sells  a  composition  of  matter,  or  makes  or  sells  any  material, 
or  thing  which  is  described  in  a  patent,  and  which  is  useful 
only  for  the  purpose  of  performing  a  process  covered  by 
that  patent,  or  which  is  thus  sold  with  knowledge  that  it  is 
to  be  used  in  performing  that  process,  there  also  the  seller 
is  liable  to  an  action  at  law  or  in  equity.3  But  where  the 
material  thus  sold  is  useful  for  some  other  purpose  than 
to  perform  the  patented  process,  and  where  the  seller  does 
not  know  when  selling  it,  that  it  is  purchased  to  be  thus 
used,  he  incurs  no  liability  to  an  action  for  infringement.4  But 
if  there  was  an  intention  that  the  thing  made  and  sold  should 
be  incorporated  into  the  patented  combination,  an  action 
for  infringement  cannot  be  defeated  by  showing  that  it  could 
have  been  used  for  some  purpose  alone,  or  in  unpatented 
combinations.5 

Persons  who  contribute  money  for  the  express  purpose 
of  supporting  others  in  infringing  a  patent,  are  also  liable 
as  infringers  ;6  and  where  an  infringer  makes  a  voluntary 
assignment  for  the  benefit  of  creditors,  and  the  assignee 


1  Woodworth  «.Edwards,3  Wood-  Mfg.   Co.    «.    Zylonite  Co.  30  Fed. 
bury  &  Minot,  121,  1847.  Rep.  437,  1887;  Boyd  t>.  Cherry,  50 

2  Wallace®.  Holmes.  9  Blatch.  73,  Fed.  Rep.  282,  1883. 

1871 ;    Schneider  v.  Pountney,   21  4  Maynard  v.  Pawling,  5  Bann.  & 

Fed.   Rep.  403,   1884;    Travers  v.  Ard.  551,  1880;  Millner«.Schofield, 

Beyer,  26  Fed.     Rep.    450,    1886;  4  Hughes,  261, 1881;  Snyder  v.  Bun- 

Stearns  v.  Phillips,  43  Fed.  Rep.  nell,  29  Fed.  Rep.  47,  1886;  Geis  v. 

795.  1890.  Kimber,  36  Fed.  Rep.  109,  1888. 

3  Rumford  Chemical  Works   «.  5  Saxe  «.   Hammond,  1  Holmes, 
Hecker,   2  Bann.  &  Ard.  363,  1876;  456,  1875;  Bowker  v.  Dows,  3  Bann. 
Willis  «.   McCullen,  29  Fed.  Rep.  &  Ard.  518,  1878. 

641, 1886;  Alabastine  Co.  v.  Payne,  6  Bate  Refrigerating  Co. «.  Gillett, 

27  Fed.  Rep.   560,   1886;  Celluloid  30  Fed.  Rep.  684, 1887. 


332  COURTS,    PARTIES   AND   CAUSES.  [CHAP.  XVII. 

continues  the  infringement,  both  may  be  sued  jointly  for 
the  infringement  committed  before,  and  also  that  committed 
after  the  assignment.1 

Where  the  owner  of  a  patent  on  something  which  infringes 
an  older  patent,  licenses  another  to  use  his  device,  and 
furnishes  to  his  licensee,  plans  and  drawings  for  making 
his  device,  and  requiring,  to  that  end,  the  making  of  the 
device  of  the  prior  patent,  without  procuring  or  intending 
to  procure  the  consent  of  its  owner,  that  licensor  is  a  joint 
inf ringer  with  his  licensee  of  the  prior  patent.3  And  where 
one  who  has  contracted  to  erect  a  building,  lets  a  portion 
of  the  work  to  a  sub-contractor,  and  in  the  prosecution  of 
their  respective  parts,  each  of  them  infringes  a  patent  of 
another,  both  of  them  are  liable  as  joint  infringers.3  So 
also  a  person  who  is  employed  as  manager  of  a  partner- 
ship, and  in  that  capacity  infringes  a  patent,  is  a  joint 
infringer  with  the  partners.4 

But  a  man  does  not  infringe  a  patent,  by  making  an 
unpatented  thing  which  is  adapted  for  use  with  a  patented 
thing,  and  selling  that  unpatented  thing  to  a  licensee  under 
the  patent.5 

Where  one  of  several  joint  infringers  is  sued  for  their 
infringement,  the  other  one  or  ones  may  be  admitted  as 
joint  defendant  to  help  defend  the  suit.6 

§  408.  A  partnership  is  liable  to  an  action  for  an  infringe- 
ment committed  in  the  regular  course  of  the  partnership 
business,  by  one  or  more  of  the  partners,  or  under  his  or 
their  orders;  and  also  for  any  infringement  committed  out- 
side of  that  regular  course  of  business,  if  it  was  previously 
authorized  or  afterward  adopted  as  the  act  of  the  partner- 


1  Gordon  «.  Harvester  Works,  23  5  Bobbins    v.    Columbus  Watch 

Fed.  Rep.  147,  1885.  Co.,  50  Fed.  Rep.  555,  1892. 

2  Toppan  v.   Tiffany  Car  Co.,  39  6  Curran  v.  Car  Co.,  32  Fed.  Rep. 
Fed  Rep.  420,  1889.  835,    1887;     Standard    Oil    Co.    v. 

3  Jackson  ®.  Nagle,  47  Fed.  Rep.  Southern  Pacific  Co.,  54  Fed.  Rep. 
703.  1891.  521,  1893;  Ring  Refrigerator  Co.  v. 

4  Featherstone  «.   Cycle  Co.   53  St.   Louis  Ice  Mfg.   Co.,  67  Fed. 
Fed.  Rep.  110,  1892.  Rep.  540, 1895. 


CHAP.  XVII.]  COUKTS,    PARTIES  AND   CAUSES.  333 

ship  by  all  the  partners.  But  no  partnership  is  liable  for 
any  infringement  committed  outside  of  the  regular  course 
of  the  partnership  business,  unless  it  was  so  authorized  or 
adopted.1 

§  409.  Private  corporations  are  responsible  for  infringe- 
ment, committed,  authorized,  or  ratified  by  them,  under 
substantially  the  same  rules  as  those  which  govern  the 
similar  responsibility  of  natural  persons.  It  was  formerly 
supposed  that  corporations  could  not  be  held  liable  for 
torts,  because  torts  are  never  authorized  by  corporate 
charters,  and  are  therefore  ultra  vires.  But  this  idea  was 
soon  found  to  produce  gross  injustice  in  its  practical  opera- 
tion ;  and  was  therefore  abandoned  by  the  courts.3  The 
law  is,  that  every  private  corporation  is  liable  for  all  the 
torts  which  were  authorized  by  that  corporation,  and  for 
all  torts  done  in  pursuance  of  any  authority  to  act  on  its 
behalf,  on  the  subject  to  which  the  torts  relate,  and  for  all 
torts  ratified  by  the  corporation  after  they  are  committed.3 
And  in  deciding  upon  this  liability,  the  courts  consider  cor- 
porate officers,  agents,  and  servants  as  possessing  a  large 
discretion,  and  they  accordingly  hold  the  corporation  liable 
for  all  their  acts  within  the  most  extensive  range  of  the 
corporate  powers.4  The  agent  of  a  corporation  in  commit- 
ting an  infringement  may  be  another  corporation  ;  and  the 
relation  of  agency  exists  and  binds  the  principal,  where 
the  agent  infringes  a  patent  in  authorized  pursuance  of  the 
business  which  the  principal  was  chartered  to  transact.5 
Unless  their  charters  otherwise  provide,  public  corpora- 
tions which  are  liable  at  all  for  infringements  of  patents, 
are  doubtless  liable  under  the  same  circumstances  and  to 
the  same  extent  as  private  corporations  are.6 


1  See  Story  on  Partnership,  Sec-  Fed.  Rep.  248,  1887. 

tioiis  166  and  168.  4  See  Cooley  on  Torts,  p.  119. 

2  Baltimore  and  Potomac    Rail-  5  York  and  Maryland  Line  Rail- 
road Co.   «.  Fifth  Baptist  Church,  road  Co.  v.  Winans,  17  Howard,  38, 
108  U.  S.  330,  1882;  Salt  Lake  City  1854. 

v.  Hollister  118  U.  S.  256,  1886.  6  May  ®.   County  of  Mercer,  30 

8  May  v.   County  of  Mercer,  30  Fed.  Rep.  248,  1887. 


334  COURTS,   PARTIES  AND   CAUSES.  [CHAP.  XVII. 

§  410.  Under  what  circumstances  and  to  what  extent  an 
officer,  director,  or  stockholder  of  a  corporation  is  person- 
ally liable  for  infringements  committed  by  it,  are  open  ques- 
tions. 

It  has  been  adjudicated  that  where  persons  actively  and 
personally  conduct  infringements  of  patents,  they  cannot 
avert  an  injunction  by  proving  that  they  acted  under  the 
charter  of  a  corporation,  and  as  officers,  directors,  or  stock- 
holders thereof. x  And  in  other  cases  it  has  been  held  that 
an  action  for  infringement  of  a  patent  will  not  lie  against  an 
officer,  director,  or  stockholder  of  a  solvent  infringing  cor- 
poration.3 And  Judge  LOWELL  held  that  an  action  at  law 
cannot  be  maintained  against  the  officers,  directors,  or 
shareholders  of  a  corporation  which  infringes  a  patent, 
even  where  such  persons  personally  conducted  the  business 
which  constituted  the  infringement.3  If  that  is  the  law  upon 
the  point,  it  must  also  be  the  law  that  no  damages  can  be 
recovered  by  an  action  in  equity  against  any  such  person. 
But  it  will  not  follow,  where  profits  have  been  realized  by 
persons  from  infringements  committed  by  them  in  the  dis- 
guise of  a  corporation,  that  they  can  lawfully  retain  those 
profits,  and  leave  the  patentee  remediless.  And  it  is  possi- 
ble that  Judge  LOWELL  was  wrong  in  his  opinion.  His 
examination  of  the  point  does  not  appear  to  have  been 
characterized  by  all  that  thoroughness  with  which  his  judi- 
cial opinions  were  generally  developed;  and  he  himself 
remarked  that  his  conclusion  was  contrary  to  what  counsel 
had  conceded  in  several  earlier  cases.  The  point  is  one  of 
much  importance.  Upon  it  may  often  depend  the  just 

1  Goodyear  v.  Phelps,  3  Blatch.  Edison  Electric  Light  Co.  ®.  Pack- 

91,  1853;  Poppenhusen  v.  Faulk,  4  ard  Electric  Co.  61  Fed.  Rep.  1005, 

Blatch.  495,  1861;  National  Brake  1893. 

Shoe  Co.  v.  Mfg.  Co.  19  Fed.  Rep.  2  Howards.  St.  Paul  Plow  Works, 

515,  1884;  Iowa  Barbed  Steel  Wire  35    Fed.  Rep.   744,   1888;     Boston 

Co.  «.  Barbed  Wire  Co.  30  Fed.  Woven  Hose  Co.  v.  Starr  Rubber 

Rep.  123,  1887;  Cahoone  Mfg.  Co.  Co.  40  Fed.  Rep.  167,  1889. 

0.  Harness  Co.  45  Fed.  Rep.  583,  3  United  Nickel  Co.  v.  Worthing- 

1891;  Armstrong  ».  Savannah  Soap  ton,  13  Fed.  Rep.  393,  1882. 
Works,  53    Fed.   Rep.   125,    1892; 


CHAP.  XVII.]  COURTS,   PARTIES  AND   CAUSES.  335 

reward  of  invention,  and  the  just  punishment  of  tort.  An 
examination  of  the  subject  in  the  light  of  analysis  and  of 
analogies  may  therefore  be  acceptable  to  the  profession. 

§  411.  Wrongs  are  divisible,  in  one  aspect,  into  two 
classes:  wrongs  of  commission  and  wrongs  of  omission. 
Where  an  officer,  director,  or  stockholder  of  a  corporation 
is  engaged  in  managing  its  business,  and  as  a  part  of  that 
business  manages  and  directs  the  infringement  of  a  patent, 
that  person  is  chargeable  with  a  wrong  of  commission. 
Where  such  a  person  has  power  to  prevent  his  corporation 
from  infringing  a  patent,  and  omits  to  exercise  that  power, 
and  where  the  corporation  therefore  infringes  that  patent, 
then  that  person  is  chargeable  with  a  wrong  of  omission. 
Where  a  person  is  an  officer,  director,  or  stockholder  of  a 
corporation,  but  has  no  personal  power  to  cause  it  to 
infringe  a  particular  patent,  nor  to  restrain  it  from  so  doing, 
that  person  is  chargeable  with  no  wrong  of  either  sort. 

§  412.  Stockholders  seldom  have  any  power,  merely  as 
stockholders,  to  control  the  action  of  their  corporation  in 
such  a  matter  of  detail  as  the  infringement  of  a  particular 
patent.  Unless  it  can  be  shown  that  the  stockholder  whom 
it  is  sought  to  hold  liable  in  a  particular  case,  did  possess 
power  of  that  kind,  it  is  clear  that  the  common  law  will  not 
compel  him  to  respond  in  damages  for  any  infringement 
with  which  he  was  not  personally  connected.  If  the  law 
were  otherwise,  a  man  could  lawfully  be  made  to  suffer  for 
wrongs  which  he  did  not  commit,  and  could  not  prevent, 
and  from  which  he  received  no  advantage.  Indeed,  it  is  the 
general  rule  of  the  common  law  that  mere  stockholders  in 
a  corporation  are  not  liable  for  its  debts,1  and  if  not  liable 
for  its  debts,  they  surely  ought  not  to  be  liable  for  its  torts. 

§  413.  The  officers  of  a  corporation  are  the  persons  who 
are  charged  with  the  superintendence  and  control  of  its 
transactions.  It  is  doubtless  their  duty  to  refrain  from 
directing  infringements  to  be  committed ;  and  also  to  prevent 
the  agents  and  servants  of  their  corporations  from  commit- 

1  Shaw  v.  Boylan,  16  Indiana,  386,  1861. 


336  COURTS,    PARTIES   AND    CAUSES.  [CHAP.  XVII 

ting  infringements  of  patents  when  prosecuting  the  corpo- 
rate business.  If  such  an  officer  directs  and  causes  a  specific 
thing  to  be  done  which  turns  out  to  constitute  an  infringe- 
ment, it  is  extremely  difficult  to  see  why  he  should  be  per- 
mitted to  shift  all  the  responsibility  for  the  tort  upon  the 
intangible  corporation,  that  is  to  say,  upon  the  innocent 
stockholders  as  a  body. 

If  an  agent  or  a  servant  of  a  corporation  commits  an 
infringement  in  the  course  of  the  corporate  business,  the 
officers  whose  function  it  is  to  control  that  agent  or  that 
servant  are  chargeable  with  a  wrong  of  omission.  They 
are  guilty  of  non-feasance  in  the  performance  of  their  official 
duties.  If  their  omission  to  prevent  the  infringement  is  the 
result  of  gross  inattention  on  their  part,  they  are  liable  to 
the  corporation  for  any  loss  it  may  incur  on  account  of  the 
infringement;  but  it  is  otherwise  if  the  omission  resulted 
from  an  error  of  judgment.1  Whether  such  an  officer  is 
liable  at  common  law  to  the  owners  of  the  patent  infringed, 
seems  to  depend  upon  other  considerations. 

If  an  officer,  in  pursuance  of  his  general  authority,  directs 
a  servant  of  a  corporation  to  make  a  machine  for  a  particular 
purpose,  which  machine  may  be  made  so  as  to  infringe  a 
patent  or  may  be  made  so  as  not  to  have  that  effect,  it 
seems  that  the  officer  is  bound  to  see  that  it  is  not  made  so 
as  to  infringe,  and  that  if  the  servant  makes  it  in  that  way, 
the  officer  is  liable  to  the  patentee. 2  But  if  a  servant  of  a 
corporation,  without  any  special  orders  to  do  so,  makes  or 
uses  or  sells  a  thing  which  turns  out  to  be  an  infringement 
of  a  patent,  it  seems  that  no  superior  officer  is  personally 
liable  therefor  at  common  law.3  It  appears  reasonable  that 
officers  of  corporations  should  be  bound  to  see  that  what- 
ever they  cause  to  be  done  is  done  lawfully ;  but  it  would 
perhaps  not  be  ordinarily  right  to  make  them  personally 


1  Spering's  Appeal,  71   Pennsyl-      (Mass.),  425,  1862. 

vania  State,  11,  1872.  3  See  Bath  v.  Caton,  37  Michigan, 

2  See  Hewett  v.  Swift,  3  Allen      202,  1877. 


CHAP.  XVII.]  COURTS,    PARTIES   AND   CAUSES.  337 

responsible  to  strangers  for  acts  spontaneously  committed 
by  their  subordinates. 

§  414.  Directors  of  corporations,  unlike  other  officers, 
act  only  in  a  collective  capacity.  Where  an  entire  board  of 
directors  unanimously  order  a  particular  thing  to  be  done 
which  will  constitute  an  infringement  of  a  patent,  and  where 
that  thing  is  accordingly  done  by  the  corporation's  agents 
or  servants,  there  seems  to  be  no  reason  why  those  directors 
should  not  be  held  personally  liable  to  an  action  for  that 
infringement.  If  the  corporation  is  alone  liable  in  such  a 
case,  then  crafty  and  dishonest  men  may  often  manage  to 
divide  the  spoils  of  infringement,  and  leave  nothing  but  an 
insolvent  or  dormant  corporation  to  be  sued  by  the  patentee. 
It  would  evidently  be  a  reproach  to  our  laws  if  such  a 
scheme  could  be  made  to  work.  Whoever  attempts  to 
defend  the  legal  safety  of  such  a  mode  of  reaping  the  harvest 
of  another,  should  have  his  attention  called  to  the  following 
sentence,  written  by  Justice  CAMPBELL,  and  approved  by 
the  Supreme  Court,  and  worthy  to  be  quoted  in  every  law- 
book,  and  remembered  by  every  man.  "  It  is  certainly  true 
that  the  law  will  strip  a  corporation  or  individual  of  every 
disguise,  and  enforce  a  responsibility  according  to  the  very 
right,  in  despite  of  their  artifices."  l 

Where  the  action  of  a  board  of  directors  in  ordering  an 
infringement,  results  from  the  votes  of  a  majority  only,  the 
relations  of  the  minority  voters  to  the  resulting  infringement 
must  be  different  from  that  of  the  others.  The  members 
of  the  minority  ought  not,  in  such  a  case,  to  be  held  liable 
for  the  action  of  the  board,  or  for  its  results,  unless  they 
afterward  adopt  it  by  ratification.  Where  an  infringement 
is  ordered  by  a  quorum  of  a  board  of  directors,  in  the 
absence  of  the  residue,  the  residue  will  be  free  from  com- 
mon law  liability  for  the  wrong  unless  they  afterward  ratify 
it,  or  unless  they  are  chargeable  with  such  gross  non-attend- 
ance upon  the  meetings  of  the  board  as  justly  causes  them 


1  York  and  Maryland  Line  Railroad  Co.  v.  Winans,  17  Howard,  40, 1854. 


338  COURTS,   PARTIES   AND   CAUSES.  [CHAP.  XVII. 

to  be  held  responsible  for  whatever  is  done  by  their  col- 
leagues in  their  absence.  The  mere  fact  of  being  a  director 
in  a  corporation  is  not  sufficient  to  render  a  person  liable 
at  common  law  for  any  tort  committed  by  that  corporation 
or  its  managers  or  agents. 1 

§  415.  But  there  is  a  statutory  liability  in  such  cases  as 
those  which  we  are  considering.  Most  of  the  States  have 
statutes  which  provide  that,  under  various  circumstances 
therein  specified,  the  officers,  directors,  or  stockholders  of  a 
corporation  shall  be  personally  liable  for  its  debts  or  liabili- 
ties. Section  721  of  the  Revised  Statutes  of  the  United 
States  provides  that  "  The  laws  of  the  several  States,  except 
where  the  Constitution,  treaties,  or  statutes  of  the  United 
States  otherwise  require  or  provide,  shall  be  regarded  as 
rules  of  decision  in  trials  at  common  law,  in  cases  where 
they  apply."  Under  this  section  of  the  Revised  Statutes, 
these  laws  of  the  States  will  probably  have  the  same  effect 
in  a  patent  suit  in  a  United  States  court,  that  they  would 
have  in  any  action  of  trespass  on  the  case  in  a  State  court.2 
Such  of  the  State  statutes  referred  to  as  make  stockholders, 
officers,  or  directors  responsible  for  the  "  liabilities "  of 
their  corporations  are  clearly  broad  enough  to  cover  liabili- 
ties arising  out  of  infringements  of  patents.  Indeed  Justice 
STORY  decided  that  such  liabilities  were  covered  by  the 
word  "  debts "  in  such  a  statute.3  In  most  of  the  States 
the  statutory  individual  liability  of  officers,  directors,  and 
stockholders  of  coporations  is  more  limited  than  it  was  in 
Massachusetts  when  Justice  STORY  made  that  decision.  It 
is  outside  the  scope  of  this  text- book  to  set  forth  the  details 
of  the  State  statutes  which  bear  upon  the  point.  It  will 

1  Arthur   v.   Griswold,  55    New  Hanger  v.  Abbott,  6  Wallace,  537, 
York,  406,  1874.  1867 ;   Campbell  v.  Haverhill,  155 

2  McCluny  t>.  Silliman,  3  Peters,  U.  S.  614,  1895 ;  Parker  v.  Hall,  2 
270,  1830;  McNeil  «.   Holbrook,  12  Fisher,  62,1857;  Parker®.  Hawk, 2 
Peters,  84,  1838;  Vance  v.  Campbell,  Fisher,  58, 1857;  Rich  v.  Ricketts,  7 
1  Black,  427,  1861;  Hauasknecht  <o  Blatch.  230,  1870 ;  Hayden  v.  Orien- 
Claypool,  1  Black,  431.1861;  Wright  tal  Mills,  15  Fed.  Rep.  605,  1883. 

v.  Bales,  2  Black,  535, 1862;  Lefflng-  3  Carver  «.  Mfg.  Co.  2  Story,  448, 
well  v.  Warren,  2  Black,  599,  1862;  1843. 


CHAP.  XVII.  J  COURTS,   PARTIES  AND   CAUSES. 

frequently  happen  that  the  controlling  legislative  edicts 
which  relate  to  the  matter  will  be  found  in  the  special 
charters  of  particular  corporations,  rather  than  in  the  gen- 
eral statutes  of  the  several  States.  The  general  principle 
which  runs  through  all  such  laws  seems  to  be  that  where  a 
corporation  is  so  managed  that  it  cannot  be  made  to  respond 
to  lawful  claims  based  on  its  contracts  or  torts,  those  officers 
or  directors  who  caused  that  inability,  or  those  officers, 
directors,  or  stockholders  who  profited  thereby,  shall  be 
made  to  respond  in  its  place. 

§  416.  A  consolidated  corporation  is  liable  to  actions  in 
equity  for  infringements  committed  before  the  consolidation, 
by  each  of  its  constituents,  if  the  property  and  franchises 
which  the  consolidated  corporation  acquired  from  that  con- 
stituent were  of  sufficient  value,  over  and  above  all  para- 
mount claims,  to  equal  the  profits  or  damages  sought  to  be 
recovered  in  such  actions.1  This  proposition  results  from 
the  fact  that  equity  regards  the  property  of  a  corporation 
as  held  in  trust  for  t^ie  payment  of  its  debts,  and  recognizes 
the  right  of  creditors  to  pursue  that  property  into  whose- 
soever possession  it  may  be  transferred,  unless  it  has  passed 
into  the  hands  of  a  bonafide  purchaser.2 

The  liability  of  consolidated  corporations  to  actions  at 
law,  for  infringements  committed  by  their  constituent  cor- 
porations, before  the  consolidation,  is  a  matter  which  does 
not  rest  on  common  law  principles,  so  much  as  upon  the 
statutes  of  the  States  wherein  those  consolidated  corpora- 
tions came  into  being,  or  upon  the  private  Acts  which 
authorized  the  consolidations,  or  upon  the  charters  of  the 
constituent  or  of  the  consolidated  companies.  Whenever 
occasion  arises  to  hold  a  consolidated  corporation  liable  to 
an  action  at  law  for  such  a  cause,  a  proper  authority  for  so 
doing  can  probably  always  be  found  in  one  or  another  of 
these  sources. 

1  Sayles  v.  The  Lake  Shore  and  ters,  286, 1834;  Curran  v.  Arkansas, 
Michigan    Southern    Railway   Co.  15  Howard,  311,  1853;  Railroad  Co. 
Manuscript,  1878.  v.  Howard,  7  Wallace,  409,  1868. 

2  Mumma  «.  Potomac  Co.  8  Pe- 


340  COURTS,   PARTIES  AND   CAUSES.  [CHAP.  XVII. 

§  417.  A  plurality  of  patents  may  be  sued  upon  in  one 
action,  where  the  inventions  covered  by  those  patents  are 
embodied  in  one  infringing  process,  machine,  manufacture, 
or  composition  of  matter ; l  but  not  otherwise. 2  But  any 
action  based  on  alleged  infringement,  in  one  process  or 
thing,  of  a  plurality  of  patents,  may  be  sustained  by  evi- 
dence that  one  of  those  patents  was  so  infringed,  though 
the  others  were  not;3  and  an  action  brought  for  alleged 
unlawful  making,  using,  and  selling  may  be  sustained  by 
evidence  of  either  of  those  three  sorts  of  infringement.4  So 
also,  an  action  may  be  based  on  infringement  committed 
during  the  first  term,  and  on  infringement  committed  dur- 
ing an  extended  term,  of  any  patent,  and  may  be  sustained 
on  proof  of  either  or  both  of  those  infringements.  And 
several  actions  may  be  based  on  several  infringements  of 
the  same  patent,  committed  at  different  times  by  the  same 
infringer.5  It  has  also  been  held  that  one  action  will  lie 
for  an  infringement  of  a  patent  and  an  infringement  of  a 
trade-mark,  where  the  trade-mark  and  the  patent  were  both 
infringed  together.6 

1  Seymour  «.  Osborne,    11  Wai-  286,  1873;  Hayes  v.  Dayton,  8  Fed. 
lace,  516,  1870;  Bates  «.  Coe,  98  U.  Rep.  702,  1880;  Barney  v.  Peck,  16 
8.   48,   1878;    Nourse    v.  Allen,    3  Fed.  Rep.  413,  1883;  Hayes  v.  Bick- 
Fisher,  63,  1859;  Gillespie  v.  Cum-  elhoupt.  23  Fed.  Rep.   184,   1885; 
mings,  3  Sawyer,  259,  1874;    Hor-  Huber  v.  Sanitary  Depot,  34  Fed. 
man  Patent  Mfg.  Co.  •».   Railroad  Rep.  752,  1888. 

Co.  15  Blatch.  444,  1879;  Gamewell  3  Matthews  v.  Mfg.  Co.  18  Blatch. 

Fire-Alarm  Telegraph  Co.  v.  Chilli-  86,  1880. 

cothe,  7  Fed.  Rep.  351, 1881;  Nellis  4  Locomotive  Truck  Co.  v.  Rail- 

v.  Mfg.  Co.  13  Fed.  Rep.  451,  1882;  way  Co.  10  Blatch.  293,  1872. 

Lilliendahl  ».  Detweller,    18  Fed.  5  Roemer  v.  Neumann,  23  Fed. 

Rep.  177,  1883;  Consolidated  Elec-  Rep.  447,  1885. 

trie  Light  Co.  v.  Electric  Light  Co.  6  Jaros  Underwear  Co.  v.  Fleece 

20  Fed.  Rep.  502,  1884;  Griffith  v.  Underwear  Co.  60  Fed.  Rep.  622, 

Segar,  29  Fed.  Rep.  707,  1887.  1894. 

2  Nellis  v.  McLanahan,  6  Fisher, 


CHAPTEE  XVIII. 


ACTIONS  AT  LAW. 


418.  Actions  of  trespass  on  the  case. 

419.  The  question  of  the  propriety 
of  actions  of  assumpsit  for  in- 
fringements of  patents,  consid- 
ered in  the  light  of  precedents. 

420.  Considered  in  the  light  of  ex- 
pediency. 

421.  Forms   of   civil   actions   pre- 
scribed  by   State   codes  and 
statutes,  where  applicable  to 
patent  cases. 

422.  Declarations  in  trespass  on  the 
case. 

428.  The  statement  of  the  right  of 
action,  in  respect  of  the  inven- 
tor. 

424.  In  respect  of  the  novelty  and 
utility  of  the  invention.  " 

425.  In  respect  of  the   absence  of 
public  use  or  sale  more  than 
two  years  before  application 
for  a  patent. 

426.  In    respect   of  the    patentee, 
•   where  he  is  another  than  the 

inventor. 

427.  In  respect  of  the  application 
for  the  patent. 

428.  In  respect  of  the  letters  patent. 

429.  In  respect  of  a  reissue. 

430.  In  respect  of  a  disclaimer. 

431.  In  respect  of  an  extension. 

432.  In    respect  of   the   plaintiff's 
title. 

433.  In  respect  of  profert  of  title. 
433a.  In  respect  of  marking  "  pat- 
ented." 

434.  In  respect  of  infringement. 

435.  In  respect  of  the  time  of  in- 


fringement. 

436.  In  respect  of  the  damages. 

437.  The  conclusion  of  the  declara- 
tion. 

438.  Substantial  and  not  technical 
accuracy  required  in  declara- 
tions. 

439.  Dilatory  pleas. 

440.  Twenty-seven  defences  plead- 
able  in  bar  in  patent  actions. 

441.  The    twenty-seven    defences 
reviewed  in  respect  of  their 
natures  and  effects. 

442.  Special  pleading. 

443.  The  general  issue  accompanied 
by  a  statutory  notice  of  special 
matter. 

444.  Notices  of  special  matter. 

445.  Defences   based   on   facts   of 
which  courts  take  judical  no- 
tice, need  not  be  pleaded. 

446.  The  first  and  second  defences. 

447.  The  third  defence. 

448.  The  fourth  defence. 

449.  The  fifth  and  sixth  defences. 

450.  The  seventh  defence. 

451.  The  eighth  defence. 

452.  The  ninth  and  tenth  defences. 

453.  The  eleventh  defence. 

454.  The  twelfth  defence. 

455.  The  thirteenth  defence. 

456.  The  fourteenth  defence. 

457.  The  fifteenth  defence. 

458.  The  sixteenth  defence. 

459.  The  seventeenth  defence. 

460.  The  eighteenth  defence. 

461.  The  nineteenth  defence. 

462.  The  twentieth  defence. 

341 


342 


ACTIONS  AT  LAW. 


[CHAP.  XVIII. 


463.  The  twenty-first  defence.  494. 

464.  The  twenty-second  defence. 

465.  The  twenty-third  and  twenty- 
fourth  defences.  495. 

466.  The  twenty-fifth  defence.  496. 

467.  The     twenty-sixth     defence : 
estoppel. 

468.  Estoppel  by  matter  of  record:      497. 
res  judicata. 

469.  Estoppel  by  matter  of  deed.          498. 

470.  The  twenty-sixth  defence;  how 
pleaded.  499. 

471.  The  twenty-seventh  defence; 
statutes  of  limitations.  500. 

472.  The  national  statute  of  limita- 
tion. 501 

476.  State  statutes  of  limitations  do      502. 
not  apply  to  any  right  of  action      503. 
which    is    attended    to    by  a      504. 
national  statute  of  limitation. 

477.  State  statutes  do  apply  to  all      505. 
rights  of  action  which  are  not      506. 
attended    to    by    a    national 
statute  of  limitation.  507. 

478.  Replications,  rejoinders,    and 
sur-rejoinders,  where  licenses      508. 
or  releases  are  pleaded. 

479.  Replications,    where  the  na-      509. 
tional  statute  of  limitation  is 
pleaded. 

480.  Replications    and    rejoinders,  i  510. 
where  a  State  statute  of  limi- 
tation is  pleaded.  511. 

481.  The  similiter. 

482.  Demurrers.  512. 

483.  Demurrers  to  declarations.  513. 

484.  Demurrers  to  pleas.  514. 

486.  Joinders  in  demurrer.  515. 

487.  Trial  of  actions  at  law  for  in-      516. 
fringement  of  patents.  517. 

488.  Trial  by  jury.  518. 

489.  Rules  of  practice.  519. 

490.  Rules  of  evidence.  520. 

491.  Letters  patent  as  evidence.  521. 

492.  Reissue  letters  patent  are  pri-      522. 
ma  fade  evidence  of  their  own      523. 
validity.  524. 


Letters  patent  presumed  to  be 
in  force  till  the  end  of  the'term 
expressed  on  their  face. 
Evidence  of  title. 
Neither  licenses,  nor  releases, 
need  be'negatived  in  a  plain- 
tiff's prima  facie  evidence. 
Evidence  of   the  defendant's 
doings. 

Expert    evidence  of  infringe- 
ment. 

Hypothetical     questions    for 
experts. 

Expert  testimony   relevant  to 
the  state  of  the  art. 
Cross-examination  of  experts. 
Evidence  of  damages. 
Defendant's  evidence  in  chief. 
Evidence  to   sustain  the  first 
defence 

To  sustain  the  second  defence. 
To  sustain  the  third  defence, 
when  based  on  prior  patents. 
When  based  on  prior  printed 
publications. 

When  based  on  prior  knowl- 
edge or  use. 

Rebutting  evidence  to  the 
third  defence,  when  based  on 
prior  knowledge  or  use. 
Rebutting  evidence  to  the 
third  defence,  however  based. 
Evidence  to  sustain  the  fourth 
defence. 

To  sustain  fifth  defence. 
The  sixth  defence. 
The  seventh  defence. 
The  eighth  defence. 
The  ninth  defence. 
The  tenth  defence. 
The  eleventh  defence. 
The  twelfth  defence. 
The  thirteenth  defence. 
The  fourteenth  defence. 
The  fifteenth  defence. 
The  sixteenth  defence. 
The  seventeenth  defence. 


CHAP.  XVIII.] 


ACTIONS  AT  LAW. 


343 


525.  The  eighteenth  defence. 

526.  The  nineteenth  defence. 

527.  The  twentieth  defence. 

528.  The  twenty-first  defence. 

529.  The  twenty-second  defence. 

530.  The  twenty-third  defence. 

531.  The  twenty-fourth  defence. 

532.  The  twenty-fifth  defence. 

533.  The  twenty-sixth  defence. 

534.  The  twenty-seventh  defence. 

535.  How  testimony  is  taken  in  ac- 
tions at  law. 

536.  When  the    judge  may  direct 
the  jury  to  return  a  verdict  for 
the  defendant. 

537.  Instructions  to  juries. 

538.  Verdicts. 

539.  New  trials. 

540.  Trials  by  a  judge  without  a 
jury. 


541.  Trial  by  referee. 

542.  Judgments. 

543.  Costs. 

544.  Costs  under  the  statute. 

545.  Attorney's  docket  fees. 

546.  Clerk's  fees. 

547.  Magistrate's  fees. 

548.  Witness  fees. 

549.  Taxation  of  costs. 

550.  Writs  of  error. 

551.  Bills  of  exception. 

552.  Erroneous    instructions,     and 
refusals  to  instruct. 

553.  Exception  to  instructions,  and 
to  refusals  to  instruct. 

554.  Time  when   exceptions  must 
be  noted,  and  time  when  bills 
of  exception  must  be  drawn 
up  and  signed. 


§  418.  AN  action  of  trespass  on  the  case,  is  prescribed  by 
the  United  States  statutes,  as  the  proper  legal  remedy,  for 
infringements  of  patents.1  Patent  rights  are  not  based 
upon  the  common  law ;  but  are  founded  wholly  upon  the 
Constitution  and  statutes  of  the  United  States.2  Where  a 
statute  creates  a  right,  and  prescribes  a  legal  remedy  for 
its  enforcement,  it  is  the  general  rule  that  no  other  com- 
mon law  remedy  can  be  used  for  that  purpose.3  Unless 
patent  rights  are  exempt  from  this  rule,  it  will  follow  that 
an  action  of  trespass  on  the  case  is  the  only  action  which 
United  States  courts  can  entertain,  when  sitting  as  common 
law  courts  in  patent  cases.  Whether  patent  rights  are  thus 
exempt,  is  a  question  which  once  arose  in  a  Supreme  Court 
case,  but  which  was  not  decided  because  it  was  apparently 
overlooked  by  the  counsel  and  by  the  court. 


1  Revised  Statutes,  Section  4919. 

3  Section  149  of  this  Book. 

3  Wiley  w.Yale,  1  Metcalf  (Mass.), 


554, 1840;  Elder  v.  Bemis.  2  Metcalf 
(Mass.)  604,  1841;  Smith  v.  Wood- 
man, 8  Foster  (28  N.  H.),  528, 1854. 


344  ACTIONS   AT   LAW.  '    .       [CHAP.  XVIII. 

The  case  was  that  of  the  Packet  Co  v.  Sickles.  It  was 
originally  an  action  of  assumpsit,  based  on  an  alleged  con- 
tract between  the  parties,  relevant  to  compensation  for  the 
use  of  a  patented  machine.  A  recovery  was  adjudged  on 
that  contract  in  the  court  below ;  but  the  Supreme  Court 
reversed  the  judgment  on  the  ground  that  the  contract  was 
not  in  writing,  and  was  not  to  be  performed  within  one  year, 
and  was  therefore  void  under  the  statutes  of  frauds.1  On 
the  case  being  remanded,  the  plaintiff  amended  the  declara- 
tion by  adding  two  counts  in  assumpsit  for  money  had 
and  received.  The  case  was  thus  changed  from  an  action 
of  assumpsit  on  a  contract,  to  an  action  of  assumpsit  to 
recover  compensation  for  the  infringement  of  a  patent. 
The  defendant  did  not  notice  the  questionable  propriety  of 
an  action  of  assumpsit  for  that  purpose,  and  therefore 
pleaded  non-assumpsit.  The  jury  found  for  the  plaintiff, 
and  having  been  instructed  by  the  court  to  assess  the  dam- 
ages on  the  basis  of  the  value  of  the  use  of  the  machine,  it 
rendered  a  verdict  for  $11,333,  with  interest  from  the  day 
when  the  suit  was  brought. 

Now  if  an  action  of  assumpsit  had  been  proper,  it  would 
be  ..difficult  to  show  any  impropriety  in  the  charge  of  the 
court,  though  in  an  action  of  trespass  on  the  case  it  would 
have  been  clearly  wrong.2  When  the  case  again  reached 
the  Supreme  Court,  it  was  again  reversed  ;  this  time  because 
the  charge  did  not  conform  to  the  precedents  relevant  to 
the  measure  of  damages  in  actions  at  law  for  infringements 
of  patents.  But  no  due  notice  appears  to  have  been  taken 
of  the  fact  that  the  case  at  bar  was  an  action  of  assumpsit, 
while  those  precedents  had  been  established  in  actions  of 
trespass  on  the  case.3  Had  that  distinction  been  attended 
to,  the  court  could  hardly  have  sustained  the  propriety  of 
the  form  of  action,  and  at  the  same  time  have  reversed  the 


1  Packet  Co.  v.  Sickles,  5  Wallace,      ard,  480,  1853. 

580,  1866.  3  Packet  Co.  ».  Sickles,  19  Wal- 

2  Seymour  fl.McCormick,  16  How-      lace,  617,  1873. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  345 

case  for  error  in  the  charge.  The  suit  was  treated  precisely 
as  though  it  had  been  an  action  of  trespass  on  the  case. 
If  the  court  had  meant  to  affirm  the  propriety  of  actions  of 
assumpsit  for  infringements  of  patents,  it  would  not  have 
so  treated  the  suit ;  for  its  ruling  would  seem  to  be  inap- 
propriate to  that  form  of  action.  The  precedent  is  there- 
fore not  fairly  citable  on  either  side  of  the  question  of  the 
propriety  of  an  action  of  assumpsit  for  the  infringement  of 
a  patent. 

§  419.  That  an  action  of  assumpsit  may  be  based  on  an 
infringement  of  a  patent,  has  been  stated  to  be  the  law  by 
at  least  two  United  States  judges.1 

In  the  first  case  cited,  Judge  HUGHES  said  :  "  Let  us  now 
suppose  the  case  of  a  person  who  takes  possession  of  and 
uses  another's  horse,  wagon  and  team,  or  threshing-machine, 
without  his  knowledge,  consent  or  authority.  ...  In  such 
a  case,  the  owner  may  recover  damages  in  trespass  for  the 
tort ;  or  he  may  waive  the  tort,  and  sue  in  assumpsit  on  the 
implied  promise  to  pay  what  is  equitably  due  for  the  use 
and  possession  of  the  property.  .  .  .The  case  I  have  sup- 
posed is,  in  principle,  precisely  the  case  we  have  at  bar,  for 
there  is  no  magical  quality  in  the  property  of  a  patentee  in 
his  patent  to  distinguish  this  case  from  the  one  just  supposed, 
where  ordinary  property  has  been  taken  and  used  without 
the  owner's  consent ....  The  act  of  the  defendant  was 
nothing  but  the  simple  one  of  a  person  taking  and  using 
anothers'  property,  without  authority,  to  his  own  advan- 
tage, and  incurring  a  liability  to  compensate  the  owner  for 
such  use  of  the  property.  The  case  is,  in  principle,  pre- 
cisely identical  with  that  of  such  a  use  of  a  horse,  or  a 
boat,  or  a  wagon  and  team,  or  threshing-machine — giving  a 
right  of  action  in  assumpsit." 


1  Sayles  v.  Richmond,  Fredericks-      Stone  Cutter  Co.   v.   Sheldons,  15 
burg  &  Potomac  RailroadCompany,      Fed.  Rep.  609,  1883. 
4  Bann.   &  Ard.  245,  1879;  Steam 


346  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

In  the  second  case  Judge  WHEELER  said :  "  When  the 
Windsor  Manufacturing  Company  sold  machines,  embody- 
ing these  inventions,  to  the  defendants  for  use,  it  invaded 
the  orator's  rights  and  converted  the  orator's  property  to 
its  own  use.  These  acts  were  tortious,  and  an  action  would 
lie  for  these  wrongs.  As  that  company  received  money  for 
the  orator's  property,  the  orator  could  waive  the  tort,  and 
sue  in  assumpsit  for  the  money,  or,  what  is  the  same  in 
effect,  proceed  for  an  account  of  the  money  received.  In 
an  action  or  proceeding  for  the  money,  the  measure  of  dam- 
ages would  be  the  amount  of  money  received,  not  the 
amount  of  damage  done,  and  all  right  of  recovery  beyond 
that  would  be  waived." 

§  420.  It  is  against  the  policy  of  the  law  that  the  owner 
of  a  patent  right  should  lose  by  reason  of  its  infringement. 
To  prevent  such  a  result,  the  action  of  trespass  on  the  case 
is  well  adapted,  because  it  measures  the  plaintiff's  recovery 
by  the  plaintiff's  loss.  But  it  is  also  against  the  policy  of 
the  law  that  an  infringer  should  gain  by  reason  of  his 
infringement.  To  prevent  such  a  result,  the  action  of  tres- 
pass on  the  case  is  not  well  adapted,  because  an  infringer 
may  often  gain  far  more  than  the  patentee  loses  by  reason 
of  the  wrongful  act  of  the  former.  Patents  are  peculiar 
property  in  this  respect.  A  horse  or  a  wagon  is  worth 
about  as  much  to  one  man  as  to  another,  but  the  use  of  a 
patent  may  be  worth  ten  times  as  much  to  a  rich  infringer 
as  to  a  poor  patentee.  It  would  be  a  reproach  to  the  patent 
laws  if  any  infringer  could  unlawfully  make,  use,  and  sell 
specimens  of  his  neighbor's  patented  invention,  and,  when 
called  to  account  in  a  court  of  justice,  could  cancel  his 
liability  by  paying  one-tenth  of  the  proceeds  of  his  tort  to 
the  owner  of  the  patent.  No  complete  system  of  law  offers 
such  a  premium  for  its  own  violation.  To  prevent  such 
failures  of  justice,  it  was  long  the  theory  and  the  practice 
of  the  United  States  courts,  that  equity  had  jurisdiction  to 
enforce  a  patentee's  right  to  recover  an  infringer's  profits, 
independently  of  all  other  equitable  titles,  rights,  and 


CHAP.  XVIII.]  ACTIONS   AT    LAW.  347 

remedies.1  But  that  theory  was  overruled,  and  that  practice 
was  stopped  by  the  Supreme  Court,  in  the  case  of  Boot  v. 
Railway  Co.2  The  new  rule  which  was  stated  and  enforced 
in  that  case,  calls  aloud  upon  courts  of  law  to  entertain 
actions  of  assumpsit  for  infringements  of  patents,  if  by  any 
means  they  can  find  authority  for  so  doing.  If  no  such 
authority  can  be  deduced  from  the  common  law,  then  it 
ought  to  be  conferred  by  legislation  ;  for  unless  it  exists  or 
is  supplied,  it  must  often  happen  that  infringers  will  profit 
by  their  infringement,  far  more  than  inventors  can  profit  by 
their  inventions. 

§  421.  A  majority  of  the  States  have  abolished  all  com- 
mon law  actions,  and  have  substituted  for  the  whole  of  them 
a  single  form  of  proceeding  which  they  call  a  civil  action. 
The  United  States  statutes  provide  that  "  The  practice, 
pleadings,  and  forms  and  modes  of  proceeding  in  civil 
causes,  other  than  equity  and  admiralty  causes,  in  the  circuit 
and  district  courts,  shall  conform,  as  near  as  may  be,  to  the 
practice,  pleadings,  and  forms  and  modes  of  proceeding 
existing  at  the  time  in  like  causes  in  the  courts  of  record 
of  the  State  within  which  such  circuit  or  district  courts  are 
held,  any  rule  of  court  to  the  contrary  notwithstanding,"3 


1  Stevens  v.  Kansas  Pacific  Rail-  Tennessee,     Virginia     &    Georgia 

way  Co.  5  Dillon,  486,  1879;  Nev-  Railroad  Co.  2  Bann.  &  Ard.  587, 

ins  v.  Johnson,  3  Blatch.  80,  1853;  1877;    Vaughan  v.  Central  Pacific 

Sickles  v.  Mfg.  Co.  1  Fisher,  222,  Railroad  Co.  3  Bann.   &  Ard.  28, 

1856;  Jenkins  v.  Greenwald,  2  Fish-  1877;  Sayles  v.   Dubuque  &   Sioux 

er,  41,  1857;  Imlay  0.  Railroad  Co.  City  Railroad  Co.  3  Bann.  &  Ard. 

4  Blatch.  228,  1858;  Perry®.  Corn-  219,  1878;  Gordon  v.   Anthony,  16 

ing,  6  Blatch.  134,  1868;  Howes  v.  Blatch.  234, 1879;  Hendriefl.  Sayles, 

Nute,  4  Cliff.  174,  1870;  Cowing  v.  98  U.  S.  546,  1879;  Bignall  v.  Har- 

Rumsey,  8  Blatch.  36  1870;  Packet  vey,  18  Blatch.  353,  1880;  Atwood 

Co.  9.  Sickles,  19  Wallace,  611, 1873;  «.  Portland  Co.    10  Fed.  Rep.  283, 

Smith  v.  Baker's  Administrators,  1  1880;  Stevens  v.  Baltimore  &  Ohio 

Bann.  &  Ard.  117,   1874;  Wetherill  Railroad  Co.  6  Fed.  Rep.  283,  1881. 

v.   Zinc  Co.    1   Bann.   &  Ard.  485,  2  Root  v.   Railway  Co.  105  U.  S. 

1874;    Burdell  9.  Denig,  92  U.   S.  189,  1881. 

720,  1875;  Birdsall  9.  Coolidge,  93  8  Revised  Statutes,  Section  914. 
U.  S.    68,   1876;  Vaughan  9.  East 


348  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

and  that  "  Damages  for  the  infringement  of  any  patent  may 
be  recovered  by  action  on  the  case." 1  Both  these  appar- 
ently inconsistent  provisions  are  contained  in  the  same 
enactment.  They  must  therefore  be  construed  together ; 
and  effect  must  be  given  to  both.  This  result  is  reached 
by  following  Section  4919  as  far  as  it  necessarily  goes,  and 
by  conforming  in  other  respects  to  Section  914.2  With 
this  view,  it  has  been  held  that  the  complaints  and  petitions 
which  are  prescribed  for  civil  actions  by  the  codes  of  sun- 
dry of  the  States,  may  be  used  in  bringing  actions  on  the 
case  for  infringements  of  patents  in  Federal  Courts  sitting 
in  those  States,  respectively  ; 3  and  indeed,  in  one  case,  it 
has  been  held  that  the  forms  of  pleading  and  procedure  in 
such  an  action  in  a  Federal  Court  should  be  the  same  as 
those  employed  in  civil  actions  in  the  State  Courts  of  the 
State  in  which  that  Federal  Court  is  located.4  But  in  a 
later  case,  it  has  been  decided,  that  the  pleadings  in  an 
action  at  law,  for  infringement  of  a  patent,  should  conform 
to  the  common  law,  even  in  a  code  State ; 5  and  inasmuch 
as  many  of  the  States  still  employ  common  law  actions  and 
pleadings  in  their  own  courts,  it  is  necessary  for  pleaders 
to  accurately  know  the  proper  characteristics  of  a  declara- 
tion, in  an  action  of  trespass  on  the  case,  for  the  infringe- 
ment of  a  patent. 

§  422.  The  proper  parts  of  such  a  declaration  are  the  fol- 
lowing :  1.  The  title  of  the  Court.  2.  The  title  of  the  term. 
3.  The  venue.  4.  The  commencement.  5.  The  statement 
of  the  right  of  action.  6.  The  conclusion. 

The  true  title  of  the  United  States  Circuit  Court  estab- 
lished in  Connecticut  is  "  Circuit  Court  of  the  United  States 
for  the  District  of  Connecticut,"  and  the  title  of  the  circuit 
court  which  is  established  in  any  other  district  is  the  same, 
except  as  to  the  name  of  the  district.6 

1  Revised  Statutes,  Section  4919.          4  Celluloid  Mfg.  Co.  v.  Zylonite 

2  Cottier v.  Stimson  18  Fed.  Rep.      Co.  34  Fed.  Rep.  744,  1888. 

690,  1883.  6  Myers  v.  Cunningham,  44  Fed. 

3  May  v.  County  of  Mercer,   30      Rep.  349,  1890. 

Fed.  Rep.  250,  1887.  6  Revised  Statutes,  Section  608. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  349 

The  proper  term  of  the  court  in  which  to  entitle  the  decla- 
ration, is  the  term  at  which  the  appearance  of  the  defendant 
is  due.1  It  is  unnecessary  to  entitle  a  declaration  in  the 
name  of  the  case  in  which  it  is  filed ;  though  it  is  convenient 
to  indorse  that  name  on  the  back  of  the  declaration,  for  the 
purpose  of  enabling  the  document  to  be  readily  found  in  a 
file. 

The  venue  should  be  laid  in  the  district  where  the  action 
is  commenced,  regardless  of  the  district  or  districts  wherein 
the  infringement  was  committed.2  An  infringement  suit, 
being  based  on  a  transitory  cause  of  action,  the  place  laid 
in  the  declaration  draws  to  itself  the  trial  of  all  questions 
of  infringement,  wherever  committed ;  except  in  the  single 
case  where  the  United  States  statutes  otherwise  provide.3 

The  commencement  contains  a  statement  of  the  names  of 
the  parties  to  the  action,  and  of  the  capacity  in  which  they 
respectively  sue  or  are  sued,  if  it  is  other  than  a  natural 
personal  capacity.  Though  it  is  probably  unnecessary,  it 
is  undoubtedly  prudent  to  state  the  nation  of  which  the 
parties  are  respectively  citizens,  and  if  that  nation  is  the 
United  States,  to  allege  also  the  particular  State  of  which 
the  parties  are  citizens  respectively.  Where  either  party  is 
a  corporation,  that  fact  must  be  stated,  and  the  name  of  the 
State  or  other  sovereignty  wherein  it  was  created  and  exists 
should  also  be  alleged.  The  commencement  properly  closes 
with  a  brief  recital  that  the  form  of  action  is  that  of  trespass 
on  the  case. 

§  423.  The  statement  of  the  right  of  action  should  contain 
the  name  and  residence  of  the  inventor,  in  order  to  identify 
him,  and  to  enable  the  defendant  to  make  inquiries  into  the 
history  of  the  alleged  invention.  If  that  name  or  that  resi- 
dence were  concealed  from  the  defendant,  he  might  thereby 
be  deprived  of  the  means  of  learning  of  several  perfect 
defences.  As  the  statutes  stand  at  present,  there  is  no 


1  1  Chitty  on  Pleading,  15  Ameri-      248,  1843. 

can  Edition,  p.  263.  »  Revised  Statutes,  Section  657; 

2  McKenna  n.  Fisk,  1   Howard,      Section  390  of  this  book. 


350  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

necessity  for  stating  the  citizenship  of  the  inventor  in  any 
declaration,  unless  the  inventor  is  also  a  party  to  the  action. 
Such  a  necessity  will  however  arise  whenever  Congress 
discriminates  between  citizens  of  the  United  States  and 
citizens  of  other  countries,  in  respect  of  the  terms  upon 
which  it  may  authorize  patents  to  be  granted. 

§  424.  The  novelty  and  the  utility  of  the  invention  must 
be  put  in  issue  by  proper  averments  in  the  declaration ; J 
but  it  is  not  necessary  to  state  the  particular  time  at  which 
the  invention  was  made,  so  that  it  appears  to  have  been 
made  before  the  application  for  the  patent  was  filed.2  The 
circumstance  that  letters  patent  are  themselves  prima  facie 
evidence  of  novelty  and  utility  does  not  render  unnecessary 
a  proper  allegation  of  those  facts  in  the  declaration.  Evi- 
dence cannot  take  the  place  of  pleading,  and  proper  plead- 
ing is  necessary  to  make  any  kind  of  evidence  admissible  in 
support  of  the  right  of  a  patentee  to  recover  for  an  infringe- 
ment of  his  patent. 

§  425.  The  statement  of  the  right  of  action  must  also  aver 
that  the  invention  was  not  in  public  use  or  on  sale  in  this 
country  for  more  than  two  years  before  the  inventor's  appli- 
cation for  the  patent;  because  that  fact  is  one  of  those 
which  are  necessary  to  give  the  Commissioner  of  Patents 
jurisdiction  to  grant  such  a  document.3  It  is  a  fact  which 
is  of  the  essence  of  the  right  of  action,  and  it  must  therefore 
be  stated  in  the  declaration.4 

§  426.  If  the  patentee  is  neither  a  party  to  the  action,  nor 
the  inventor  of  the  thing  or  process  covered  by  the  patent ; 
it  is  natural  and  proper  to  separately  state  his  name  in 

1  Coop  v.  Development  Institute,      Gandy  «.  Belting  Co.  143  U.  S.  592, 
47  Fed.  Rep.  900,  1891;    Overman      1892. 

Wheel  Co.  v.  Elliott  Cycle  Co.  49         4  Gray  ».  James,  1  Peters'  Circuit 

Fed.  Rep.  859, 1892;  Goebel  v.  Sup-  Court  Reports,  482,  1817;  Blessing 

ply  Co.  55   Fed.   Rep.   827,   1893;  ».  Copper  Works,  34  Fed  Rep.  754, 

Ross  v.  Ft.  Wayne,  58  Fed.  Rep.  1888;  Nathan  Mfg.  Co.  v.  Craig,  47 

407,  1893.  Fed.  Rep.  522,  1891;  Consolidated 

2  Wilder  «.  McCormick,  2  Blatch.  Brake  Shoe  Co.  v.  Detroit  Spring 
31,  1846.  Co.,  47  Fed.  Rep.  895,  1890. 

a  Revised  Statutes,  Section  4886; 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  351 

order  to  fully  and  surely  identify  _the  patent.  It  is  well  also 
to  state  his  residence  and  his  citizenship,  though  there  is  at 
present  no  requirement  of  law  on  either  of  these  points. 

§  427.  It  is  not  necessary  to  state  in  a  declaration  the 
particulars  of  the  application  for  the  letters  patent,  nor  the 
particulars  of  the  proceedings  of  the  Patent  Office  in  con- 
sidering that  application;  because  the  courts  will  presume 
that  everything  was  rightly  done  which  the  law  required  to 
be  done  in  order  to  authorize  the  Commissioner  to  issue  the 
patent.1  It  is  customary  and  proper  to  say  in  a  declaration 
that  the  inventor  made  due  application  for  letters  patent, 
but  not  even  that  general  allegation  appears  to  be  required.2 

§  428.  The  declaration  may  indicate  the  letters  patent  in 
the  language  of  the  grant,  and  make  profert  thereof ;  and  if 
that  is  done,  it  is  not  necessary  to  set  out  the  specification 
either  verbatim  or  substantially  •, 3  though  it  is  not  improper, 
except  in  point  of  prolixity,  to  incorporate  the  whole  of  the 
patent  and  specification  into  the  declaration.4 

The  declaration  must  state  that  the  letters  patent  were 
issued  in  the  name  of  the  United  States  of  America,  under 
the  seal  of  the  Patent  Office,  and  were  signed  by  the  Sec- 
retary of  the  Interior,  or  an  Assistant  Secretary  of  the 
Interior,  as  the  case  may  be,  and  countersigned  by  the 
Commissioner  of  Patents,  and  that  they  were  delivered  to 
the  patentee.5  Inasmuch  as  patents  are  granted  for  various 
spaces  of  time,  it  is  necessary  to  state  the  particular  term 
for  which  the  letters  patent  in  suit  were  issued.  It  is 


1  Cutting  v.  Myers,  4  Washington,  Telephone  Co.  34  Fed.  Rep.  803, 
221,  1818.  1888;  Dickerson  v.  Greene,  53  Fed. 

2  Wilder  v.  McCormick,  2  Blatch.  Rep.  247,  1892;  Enterprise  Co.   v. 
81,  1846.  Snow,  67  Fed.  Rep.  235,  1895;  Ger- 

3  Cutting  v.  Myers,  4  Washington,  main  v.  Wilgus,  67  Fed.  Rep.  597, 
223,  1818;   McMillin  «.  Transporta-  1895. 

tion  Co.  18  Fed.  Rep.   260,  1884;  4  Wilder  v.  McCormick,  2  Blatch. 

Post  v.  Hardware  Co.  25  Fed.  Rep.  35,  1846. 

905,  1885;  Bogart  v.  Hinds,  25  Fed.  6  Revised  Statute*,  Section  4883; 

Rep.  484,  1885;   Wise  «.  Railroad  25  Statutes  at  Large,  Ch.  15,  p.  40; 

Co.  33  Fed.  Rep.  277,  1888;  Ameri-  Cutting  v.  Myers,  4  Washington, 

can  Bell  Telephone  Co.  v.  Southern  222,  1818. 


352  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

necessary  also  to  plead  the  legal  effect  of  the  patent,  by 
saying  that  it  did  grant  to  the  patentee,  his  heirs  or  assigns, 
the  exclusive  right  to  make,  use  and  vend  the  invention 
covered  thereby,  throughout  the  United  States  and  the 
Territories  thereof.1 

§  429.  Where  the  patent  upon  which  the  action  is  based 
is  a  reissue,  the  original  letters  patent  should  be  set  forth 
precisely  as  though  no  surrender  and  reissue  had  occurred  ; 
and  in  addition  thereto,  it  is  proper  to  state  the  particular 
kind  of  defect  which  made  the  original  a  proper  subject  of 
a  reissue  ;  and  to  state  also  that  such  defect  arose  from 
inadvertence,  accident,  or  mistake,  as  the  case  may  be,  and 
without  any  fraudulent  or  deceptive  intention  ;  and  to  state 
that  the  original  patent  was  surrendered,  and  who  surren- 
dered it ;  and  to  state  that  the  Commissioner  of  Patents 
caused  a  new  patent  to  be  issued  for  the  same  invention ; 
and  to  state  finally  the  name  of  the  person  to  whom  such 
new  patent  was  granted.  These  particulars  lie  at  the  foun- 
dation of  the  right  of  the  grantee  of  a  reissue  patent  to 
receive  such  a  grant ;  and  although  the  reissue  is  prima 
facie  evidence  that  the  truth  on  all  these  points  is  favor- 
able to  the  validity  of  the  patent,  it  is  none  the  less  proper 
to  put  those  facts  in  issue  by  proper  pleading.  And  it  is 
hardly  prudent  to  venture  a  case  on  a  more  indefinite  form 
of  pleading  ;  though  a  more  indefinite  form  of  pleading  has 
once  been  held  sufficient  in  such  a  case.2 

§  430.  Where  a  disclaimer  has  been  filed,  that  fact  ought 
to  be  stated  in  the  declaration,  and  its  legal  effect  ought  to 
be  indicated,  because  disclaimers  constitute  amendments  of 
original  patents,  and  operate  to  vary  their  scope.3  In  such 
a  case  also,  the  declaration  ought  to  state  that  the  dis- 
claimer was  filed  without  unreasonable  delay,  because  that 
fact  is  necessary  to  the  right  of  a  patentee  to  maintain  a 
suit  on  a  patent  which  required  a  disclaimer.4 

§  431.  Where   the   patent  in    suit  was  extended  by  the 

1  Revised  Statutes,  Section  4884.          3  Revised  Statutes,  Section  4917. 

2  Spaeth  v.  Barney,  22  Fed.  Rep.          4  Revised  Statutes,  Section  4922. 

828,  1885. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  353 

Commissioner  of  Patents,  and  where  the  action  is  based 
partly  or  wholly  on  its  extended  term,  the  declaration  must 
state  that  the  extension  was  made  in  due  form  of  law,  and 
must  show  that  it  was  made  before  the  expiration  of  the 
original  term.  It  ought  to  state  also  that  the  extension  was 
for  the  term  of  seven  years  from  the  expiration  of  the  first 
term  ;  but  as  that  is  true  of  all  such  extensions,  it  is  possible 
that  the  omission  would  be  an  immaterial  one. 

Where  the  patent  has  been  extended  by  a  special  Act  of 
Congress,  and  where  the  suit  is  partly  or  wholly  based  on 
such  extension,  the  declaration  must  state  the  legal  effect 
of  the  Act  of  extension,  and  it  must  especially  show  the  par- 
ticular space  of  time  covered  thereby. 

§  432.  Where  the  plaintiff  is  an  assignee  or  grantee  of 
the  patentee,  it  is  safer  to  set  forth  all  the  mesne  assign- 
ments or  grants  down  to  him,  than  merely  to  state  that  the 
exclusive  right  which  was  infringed  by  the  defendant,  came 
to  the  plaintiff  by  assignment  or  by  grant.  This  point  of 
pleading  seems  deducible  by  analogy  from  the  rule  relevant 
to  declaring  on  an  assigned  term  for  years  of  real  estate.1 
And  it  has  once  been  decided,  that  a  bill,  and  inferentially 
a  declaration,  must  not  only  state  how  and  when  the  plain- 
tiff became  the  owner  of  the  patent,  but  must  also  allege 
ownership  at  the  time  of  bringing  the  suit ; a  but  Justice 
BROWN  said,  in  his  oration  on  the  Twentieth  Century,  before 
the  Yale  Law  School  in  June,  1895,  that  "it  is  one  of  the 
ancient  maxims  of  the  law,  that  a  state  of  things  once 
proven  to  exist,  is  presumed  to  continue."  It  therefore 
appears  that  the  decision  last  mentioned  was  inadvertently 
made ;  and  that  where  a  declaration  traces  the  title  into  the 
plaintiff,  it  needs  to  state  nothing  more  on  the  subject  of 
title.  Title  papers  should  be  set  forth  by  their  legal  effect, 
rather  than  incorporated  bodily  into  the  declaration. 

§  433.  No  profert  need  be  made  in  any  declaration,  of  any 
assignment  or  grant  of  any  interest  under  letters  patent, 


1 1  Chitty  on  Pleading,  368.  2  Krick  t>.  Jansen,   52  Fed.  Rep. 

823,  1892. 


354  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

because,  although  those  instruments  are  sometimes  under 
seal,  they  are  not  required  to  be  so,1  and  therefore  do  not 
fall  within  the  definition  of  a  deed.2  If,  however,  the  title 
of  the  plaintiff  is  founded  upon  letters  testamentary  or 
letters  of  administration,  he  must  make  profert  of  the  same, 
because  they  constitute  exceptions  to  the  general  rule  that 
profert  is  necessary  only  of  deeds.3  If  profert  is  made  of 
any  document  of  which  it  is  not  necessary,  it  will  be  treated 
as  mere  surplusage,  and  will  not  entitle  the  defendant  to 
oyer.4 

§  433#.  The  declaration  must  state,  either  that  no  person 
ever  made  or  sold  the  patented  article  under  the  authority 
of  the  patent ;  or  that  such  of  the  patented  articles  as  were 
thus  made  or  sold,  had  the  word  "  patented,"  together  with 
the  day  and  year  the  patent  was  granted,  fixed  thereon,  or 
when,  from  the  character  of  the  article  this  could  not  be 
done,  then  to  the  package  wherein  one  or  more  of  them 
was  enclosed ;  or  otherwise  that  the  defendant  was  duly 
notified  that  his  doings  were  an  infringement  of  the  patent, 
and  continued,  after  such  notice,  to  infringe.5 

§  434.  Infringement  may  be  stated  in  a  declaration  in 
general  terms.6  Such  a  statement  may  plainly  allege  that 
the  defendant,  without  the  leave  or  license  of  the  owner  of 
the  patent,  did  use,  or  that  he  did  make,  or  that  he  did  sell, 
a  specimen  or  specimens  of  the  thing  or  process  covered  by 
the  patent,  or  by  specified  claim  thereof  where  not  all  are 
infringed,  within  the  territory  covered  by  the  plaintiff's 
title  thereto,  and  within  the  time  during  which  the  plaintiff 
held  the  title  within  that  territory,  and  contrary  to  the  form 
of  the  Act  of  Congress  in  such  cases  made  and  provided, 
and  against  the  privileges  granted  by  the  patent.7  This  last 


1  Revised  Statutes,  Section  4898.  24A,  1894. 

2  Stephen  on    Pleading,    Ninth  6  American  Bell  Tel.  Co.  v.  South- 
American  Edition,  437.  ern    Tel.    Co.   34  Fed.    Rep.    803, 

3  Gould's    Pleading,    Ch.    VIII,  1388. 

Section  43.  v  Cutting  v.  Myers,  4  Washing- 

4  1  Chitty  on  Pleading,  366.  ton,  223,  1818. 
s  Dunlap  v.  Schofield,  152  U.  S. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  355 

statement  seems  hardly  necessary,  for  it  is  but  a  conclusion 
of  law  from  the  facts  stated.  And  the  allegation  that  the 
infringement  was  contrary  to  the  statute  is  unnecessary, 
unless  the  plaintiff  seeks  to  recover  exemplary  as  well  as 
actual  damages.1  Nor  is  it  generally  necessary  in  a  declara- 
tion to  negative  the  hypothesis  of  a  license  ;  for  licenses, 
where  they  exist,  may  more  properly  be  first  mentioned  in 
the  pleadings  of  the  defendant.2  But  where  the  declaration 
shows  that  strangers  to  the  suit  have  an  exclusive  United 
States  license,  it  must  also  show  that  the  defendant  is  not 
lawfully  operating  thereunder.3  While  an  allegation  of 
either  making,  using,  or  selling  will  be  sufficient  in  a  declara- 
tion to  show  a  cause  of  action,  no  allegation  of  any  one  of 
these  kinds  of  infringement  will  support  evidence  of  either 
of  the  others.  A  declaration  ought  therefore  to  allege  as 
many  of  them  as  the  plaintiff  has  any  expectation  of  being 
able  to  prove. 

Where  a  suit  is  brought  against  a  plurality  of  defendants, 
it  has  been  held,  that  the  declaration  need  not  expressly 
state  that  their  infringement  was  joint.4 

§  435.  The  time  of  the  infringement  is  properly  stated 
by  alleging  that  it  occurred  on  a  specified  day,  and  on  divers 
other  days  between  that  day  and  some  later  specified  date ; 
and  no  plaintiff  will  be  permitted  to  prove  infringement 
outside  of  the  space  of  time  which  he  specified  in  his  declar- 
ation.5 Eepeated  infringements  may  be  sued  for  in  one 
action  ;6  but  all  of  the  infringements  complained  of  in  one 
declaration  must  have  been  committed  after  the  plaintiff 
obtained  the  title  to  the  patent,  and  before  the  beginning 
of  the  action.  Where  the  plaintiff  is  an  assignee,  and  where 


1  Parker  v.  Haworth,  4  McLean  4  Indurated  Fibre  Co.  v.  Grace, 

373,  1848.  52  Fed.  Rep.  126,  1892. 

3  Gelpcke  v.  Dubuque,  1  Wallace,  5  Eastman  v.  Bodfish,  1  Story, 

222,  1863;  Catlin  t>.  Insurance  Co.  530,  1841;  LePage  Co.  v.  Russia 

1  Sumner,  440,  1833;  Fischer  v.  Cement  Co.  51  Fed.  Rep.  949, 

Hayes,  6  Fed.  Rep.  79,  1881.  1892. 

3  Still  v.  Reading,  20  Off.  Gaz.  «  Wilder  v.  McCormick,  2  Blatch. 

1086,  1881.  32;  1846. 


356  ACTIONS  AT   LAW.  [CHAP.  XVIII. 

he  not  only  has  rights  of  action  against  the  defendant,  for 
infringements  committed  after  the  date  of  his  assignment, 
but  also  has  purchased  rights  of  action  against  the  same 
party,  for  infringements  committed  before  such  purchase, 
he  must,  if  he  sues  at  law,  bring  a  separate  action  for  the 
latter  causes,  and  must  bring  that  action  in  the  name  of  the 
person  who  owned  the  patent  at  the  time  they  accrued. 

§  436.  The  damages  incurred  by  the  plaintiff  on  account 
of  a  defendant's  infringement  must  be  stated  specially, 
because  no  particular  damage  necessarily  arises  from  in- 
fringements of  patents,  and  therefore  none  is  implied  by  the 
law.1  The  special  damages  to  be  alleged  in  any  particular  case 
depend  upon  the  circumstances  of  that  case ;  depend  upon 
the  particular  criterion  of  damages  upon  which  the  plaintiff 
relies.  The  various  measures  of  damages  in  patent  cases 
are  stated  and  explained  in  the  nineteenth  chapter  of  this 
book.  One  or  more  of  them  will  be  found  to  be  applicable 
to  every  case  which  is  likely  to  arise.  From  among  them, 
the  pleader  may  select  those  which  he  expects  to  be  able  to 
prove  to  be  pertinent,  and  may  then  draw  his  special  state- 
ment of  damages  accordingly.  Such  a  special  statement  is 
required  by  the  substantial  principles  of  pleading,  as  well 
as  by  its  technical  rules.  Without  it,  the  defendant  would 
not  be  apprised  of  all  the  issues  of  the  case.  He  would  not 
know,  till  the  day  of  trial,  whether  the  plaintiff  would  prove 
an  established  royalty,  or  prove  interference  with  his  busi- 
ness, or  prove  what  would  be  a  reasonable  royalty,  as  the 
criterion  of  his  damages.  The  defendant  would  therefore 
have  to  go  to  court  provided  with  witnesses  on  all  these 
points,  or  would  have  to  trust  his  sagacity,  and  guess  which 
of  these  points  he  would  be  called  upon  to  meet.  It  was 
to  prevent  such  inconveniences  that  written  pleadings  were 
originally  designed;  and  for  the  same  purpose,  among 
others,  they  are  still  retained  as  a  part  of  actions  in  courts. 

§  437.  The  conclusion  of  a  proper  declaration  in  a  patent 
case  alleges  that,  by  force  of  the  statutes  of  the  United 

1  1  Chitty  on  Pleading,  396. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  357 

States,  a  right  of  action  has  accrued  to  the  plaintiff  to 
recover  the  actual  damages  which  the  declaration  specifies, 
and  such  additional  amount,  not  exceeding  in  the  whole 
three  times  the  amount  of  such  actual  damages,  as  the  court 
may  see  fit  to  adjudge  and  order,  besides  costs.  The  con- 
clusion ends  with  the  ancient  allegation  of  bringing  suit. 

§  438.  A  declaration,  though  not  drawn  in  due  form,  is 
sufficient  for  practical  purposes,  if  it  contains  all  that  is 
essential  to  enable  the  plaintiff  to  give  evidence  of  his  right, 
and  of  its  violation  by  the  defendant,  and  affords  to  the 
defendant  the  opportunity  of  interposing  every  defence 
allowed  to  him  by  law.1  Courts  do  not  encourage  merely 
technical  objections  to  pleadings,  and  even  on  special 
demurrer,  will  seek  to  sustain  those  which,  though  not  tech- 
nically accurate,  are  substantially  sufficient  for  the  real 
purposes  of  pleading. 

§  439.  Dilatory  pleas  in  patent  actions  are  not  materially 
different  in  their  nature  and  operation  from  corresponding 
pleas  in  other  common  law  cases.  It  is  therefore  unneces- 
sary to  treat  those  preliminary  defences  in  this  book. 
Recourse  may  be  had  to  the  standard  works  on  common 
law  pleading  for  whatever  information  the  patent  pleader 
may  require  upon  the  subject. 

§  440.  The  defences  which  are  pleadable  in  bar  to  an 
action,  are  very  numerous  in  the  patent  law,  and  most  of 
them  are  peculiar  to  this  branch  of  jurisprudence.  Where 
the  facts  appear  to  warrant  so  doing,  a  defendant  may  plead: 
1.  That  the  matter  covered  by  the  letters  patent  was  not 
a  statutory  subject  of  a  patent  :  or  2.  That  it  was  not 
an  invention :  or  3.  That  it  was  not  novel  at  the  time  of  its 
alleged  invention :  or  4.  That  it  was  not  useful  at  that  time : 
or  5.  That  the  inventor  actually  abandoned  the  invention : 
or  6.  That  he  constructively  abandoned  it,  by  not  applying 
for  a  patent  on  it,  till  more  than  two  years  after  it  was  in 
public  use  or  on  sale  in  this  country :  or  7.  That  the  inven- 
tion claimed  in  the  original  patent  is  substantially  different 

1  Wilder  v.  McCormick,  2  Blatch.  37,  1846. 


358  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

from  any  indicated,  suggested,  or  described  in  the  original 
application  therefor  :  or  8.  That  the  patentee  surreptitiously 
or  unjustly  obtained  the  patent  for  that  which  was  in  fact 
the  invention  of  another,  who  was  using  reasonable  diligence 
in  adapting  and  perfecting  the  same :  or  9.  That  the  inven- 
tion was  made  by  another  jointly  with  the  sole  applicant: 
or  10.  That  it  was  made  by  one  only  of  two  or  more  joint 
applicants :  or  11.  That  for  the  purpose  of  deceiving  the 
public,  the  description  and  specification  filed  in  the  Patent 
Office  was  made  to  cover  less  than  the  whole  truth  relevant 
to  the  invention,  or  was  made  to  cover  more  than  was 
necessary  to  produce  the  desired  effect:  or  12.  That  the 
description  of  the  invention  in  the  specification  is  not  in 
such  full,  clear,  concise,  and  exact  terms  as  to  enable  any 
person  skilled  in  the  art  or  science  to  which  it  appertains, 
or  with  which  it  is  most  nearly  connected,  to  make,  con- 
struct, compound,  and  use  the  same :  or  13.  That  the  claims 
of  the  patent  are  not  distinct :  or  14.  That  the  patentee 
unreasonably  delayed  to  enter  a  needed  disclaimer :  or  15. 
That  the  original  patent  was  surrendered  and  reissued  in 
the  absence  of  eveiy  statutory  foundation  therefor :  or  16. 
That  the  claims  of  the  reissue  patent  in  suit  are  broader 
than  those  of  the  original,  and  that  the  reissue  was  not 
applied  for  till  a  long  time  had  elapsed  after  the  original 
was  granted :  or  17.  That  the  reissue  patent  in  suit  covers 
a  different  invention  from  any  which  the  original  patent 
shows  was  intended  to  be  secured  thereby :  or  18.  That  the 
invention  claimed  in  the  original  patent,  is  substantially 
identical  with  an  invention  claimed  in  a  prior  patent  granted 
on  the  application  of  the  same  inventor:  or  19.  That  the 
patent  was  repealed :  or  20.  That  the  patent  legally  expired 
before  the  alleged  infringement  began,  or  before  it  ended : 
or  21.  That  the  patentee  made  or  sold  specimens  of  the 
invention  covered  by  his  patent,  without  marking  them 
"patented,"  and  without  notifying  the  defendant  of  his 
infringement :  or  22.  That  the  plaintiff  has  no  title  to  the 
patent,  or  no  such  title  as  can  enable  him  to  maintain  the 
action:  or  23.  That  the  defendant  has  a  license,  which 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  359 

authorized  part  or  all  of  the  doings  which  constitute  the 
alleged  infringement:  or  24.  That  the  defendant  has  a 
release,  discharging  him  from  liability  on  account  of  part  or 
all  of  the  alleged  infringement :  or  25.  That  the  defendant 
is  not  guilty  of  any  infringement  of  the  patent  upon  which 
he  is  sued:  or  26.  That  the  plaintiff  is  estopped  from 
enforcing  any  right  of  action  against  the  defendant :  or  27. 
That  the  cause  of  action  sued  upon  is  partly  or  wholly 
barred  by  some  statute  of  limitation. 

§  441.  The  first  fourteen  of  these  defences  assail  the 
validity  of  original  patents ;  and  either  of  them,  if  success- 
fully maintained,  will  defeat  any  such  patent,  and  therefore 
defeat  any  action  based  thereon.  All  of  the  fourteen  are 
also  applicable  to  actions  based  upon  reissue  patents,  for 
though  a  defective  or  insufficient  specification,  or  a  defective 
or  insufficient  claim,  or  an  excessive  claim,  can  be  cured  by 
surrender  and  reissue,1  those  faults  are  sometimes  retained 
and  sometimes  introduced  in  reissues. 

The  fifteenth,  sixteenth,  and  seventeenth  of  these  defences 
assail  reissues  as  reissues.  To  what  extent  those  defences, 
if  successful,  will  affect  the  patent,  or  the  action,  are  points 
which  are  explained  in  the  chapter  on  reissues.2 

The  eighteenth  defence  assails  the  validity  of  original 
patents,  and  it  may  be  applicable  to  all  the  claims  of  such 
a  patent,  or  it  may  be  applicable  to  only  some  of  them. 
And  a  patent  will  not  be  invalidated  throughout,  by  the  fact 
that  one  or  more  of  its  claims,  less  than  all  of  them,  must 
be  invalidated  on  this  ground,  any  more  than  where  such 
invalidity  arises  out  of  any  other  reason. 

The  nineteenth  defence,  when  true,  will  certainly  be  a 
full  one  to  any  action  based  on  alleged  infringements  which 
were  committed  after  the  repeal  of  the  patent.  Whether  it 
will  be  a  defence  to  any  infringement  committed  before  that 
time,  will  depend  upon  whether  the  patent  is  repealed  ab 
initio,  or  only  infuturo. 


1  Revised  Statutes,  Section  4916.          2  Sections  221   and   249  of    this 

book. 


360  ACTIONS   AT   LAW.  [CHAP.    XVIII. 

The  twentieth  defence  will  be  available  where  the  defend- 
ant can  prove  that  the  invention  was  patented  with  the 
knowledge  and  consent  of  the  inventor  in  some  foreign 
country  before  it  was  patented  in  the  United  States,  and 
that  such  foreign  patent  expired  before  the  United  States 
patent  purported  to  terminate.  This  defence,  if  successful, 
will  not  affect  the  validity  of  the  patent.  It  will  merely 
limit  its  duration  to  less  than  seventeen  years.1 

The  twenty-first  defence,  if  successful,  will  bar  the  action, 
but  it  will  not  affect  the  patent.  Any  oral  or  written  notice 
of  infringement,  if  given  to  the  defendant  without  stopping 
his  infringement,  will  oust  the  defence  as  to  subsequent 
infringements.2 

The  last  six  of  the  twenty-seven  defences  are  all  without 
relevancy  to  the  validity  of  the  patent.  Either  of  them  may 
be  partly  or  wholly  successful,  according  to  the  circum- 
stances of  each  action,  regardless  of  the  success  or  want  of 
success  which  may  attend  the  other  twenty-one. 

§  442.  Such  of  these  defences  as  can  be  established  from 
the  face  of  the  declaration,  or  of  the  letters  patent  upon 
which  the  suit  is  based,  or  can  be  based  upon  a  fact  of 
which  the  court  will  take  judicial  notice,  may  be  made  by 
demurrer;  but  if  so  made  and  overruled,  such  a  defence  cannot 
afterward  be  made  in  a  plea,  without  leave  of  the  court.3 

The  ancient  rules  of  common  law  pleading  would  require 
a  special  plea  for  either  of  the  twenty-seven  defences  which 
are  enumerated  in  Section  440,  save  only  the  defence  of 
non-infringement,  and  sometimes  that  of  want  of  title.4 
But  a  loose  and  unscientific  relaxation  of  that  part  of  those 
rules  crept  at  one  time  into  practical  pleadings,  both  in 
England  and  .America.  The  abuse  was  reformed  in  England 
in  the  fourth  year  of  William  the  Fourth;5  but  in  the 
United  States  it  has  continued,  except  so  far  as  it  has  been 

1  Section  1 63  of  this  book.  3  Brickill  v.  Hartford,  57  Fed.  Rep. 

2  New  York  Pharmical  Associa-      218,  1893. 

tion  v.  Tilden,  14  Fed.  Rep.  740,  4  Stephen  on  Pleading,  160. 
1882;  Allen  «.  Deacon,  21  Fed.  Rep.  6  Stephen  on  Pleading,  158. 
122,  1884. 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  361 

limited  or  enlarged  by  legislation  in  particular  States.  But 
there  was  never  any  principle  which  guided  this  departure 
from  the  ancient  law,  and  therefore  no  foundation  for  any 
science  of  the  subject.  Where  an  authoritative  precedent 
can  be  found  for  a  particular  relaxation,  that  particular 
relaxation  must  be  regarded.  In  the  absence  of  such  a 
precedent,  the  safe  and  proper  course  is  to  conform  to  the 
ancient  common  law  rules,  unless  the  pleader  is  willing  to 
risk  his  defence  upon  the  theory  that  State  statutes  relevant 
to  pleadings  are  binding  on  Federal  courts  when  trying 
patent  actions  of  trespass  on  the  case.  The  text  writer 
believes  that  they  are  not  binding  under  such  circumstances, 
because  actions  of  trespass  on  the  case  were  first  prescribed 
by  Congress  for  patent  suits  in  1790,1  and  because  the  law 
has  never  since  been  changed  in  that  particular,  and  because, 
therefore,  there  seems  to  be  no  good  cause  for  holding  that 
such  an  action  under  the  Revised  Statutes  is  a  different 
proceeding  from  what  it  was  under  the  earliest  of  the  stat- 
.utes  at  large.2 

§  443.  The  patent  statute  provides  that  five  of  the  twenty- 
seven  defences  maybe  made  under  the  general  issue,  accom- 
panied! with  a  certain  statutory  notice  of  special  matter.3 
Those  are  the  defences  which,  in  Section  440  of  this  book, 
are  numbered  three,  five,  six,  eight,  and  eleven,  respectively. 
In  the  statute  they  are  mentioned  in  a  different  order ;  and 
indeed  the  fifth  and  sixth  are  there  grouped  together.,  and 
the  third  is  there  separated  into  two  parts.  The  reasons 
for  changing  the  classification  in  those  particulars,  are  prob- 
ably obvious  to  the  reader.  The  fifth  and  sixth  defences 
are  entirely  distinct  from  each  other;  while  the  third  is 
sustained  by  evidence  of  anticipating  matter,  whether  that 
matter  is  a  prior  patent  or  printed  publication  as  contem- 
plated by  one  division  of  the  statute,  or  is  a  prior  knowledge 
or  use  as  contemplated  by  another.  Either  of  these  five 


1  1  Statutes  at  Large,  Ch.  7,  Sec.      Rep.  349,  1890. 

4,  p.  111.  »  Revised  Statutes,  Section  4920. 

2  Myers  v.  Cunningham,  44  Fed. 


362  ACTIONS   AT   LAW.  [CHAP.    XVIII. 

defences  may  also  be  made  under  a  special  plea,  instead  of 
under  the  general  issue  accompanied  by  notice,  if  the  defend- 
ant so  determines.1  But  if  any  defendant  uses  both  these 
forms  of  pleading  for  any  one  defence,  the  court  will  on 
motion  call  upon  him  to  select  the  one  which  he  prefers, 
and  to  abandon  the  other.2 

§  444.  Notices  of  special  matter  must  be  in  writing,  and 
must  be  served  on  the  plaintiff  or  his  attorney  at  least  thirty 
days  before  the  trial  of  the  case.3  No  such  notice  requires 
any  order  of  court  as  a  prerequisite  thereto ;  and  deposi- 
tions taken  before  the  service  of  such  a  notice  are  as  admis- 
sible under  it  as  if  taken  afterward.4  It  is  not  the  purpose 
of  the  statute  to  oblige  the  defendant  to  give  notice  of  antici- 
pating matter  before  taking  testimony,  and  thus  to  enable 
the  plaintiff  to  tamper  with  the  witnesses.  Its  only  purpose 
is  to  give  the  plaintiff  thirty  days  before  the  trial  in  which 
to  secure  evidence  to  contradict  the  testimony  of  the  defend- 
ant's witnesses,  in  case  the  latter  is  untrue. 

Notices  of  want  of  novelty  must  state  the  names  of  the 
prior  patentees,  and  the  dates  of  their  patents,  where  prior 
patents  are  relied  upon ;  and  where  prior  knowledge  or  use 
is  relied  upon,  such  a  notice  musj;  state  the  names  and 
residences  of  the  persons  alleged  to  have  had  the  prior 
knowledge  of  the  thing  patented,  and  where  and  by  whom 
it  was  used.5  Where  prior  printed  publications  are  relied 
upon  as  negativing  the  novelty  of  the  patented  invention, 
the  statute  does  not  say  how  such  publications  are  to  be 
identified  in  such  notices.  But  the  Supreme  Court  has 
decided  that  they  must  be  pointed  out  with  sufficient  defi- 
niteness  to  relieve  the  plaintiff  from  making  an  unnecessarily 
laborious  search  therefor.6  In  the  case  just  cited,  a  notice 
was  held  to  be  insufficient,  which  stated  that  the  patented 


1  Evans  v.  Eaton,  3  Wheaton,  454,  4  Teese  v.  Huntingdon,  23  How- 
1818;  Grant  v.  Raymond,  6  Peters,  ard,  2,  1859. 

218,  1832;  Day  ».  Car-Spring  Co.  3  5  Revised  Statutes,  Section  4920. 

Blatch.  181,  1854.  6  Silsby  v.  Foote,  14  Howard,  218, 

2  Read  v.  Miller,  2  Bissell,  16, 1867.  1852. 

3  Revised  Statutes,  Section  4920. 


CHAP.    XVIII.]  ACTIONS   AT  LAW.  363 

thing  was  described  in  a  certain  book  therein  mentioned, 
but  did  not  state  in  what  part  of  that  book  it  was  so 
described.  Notices  of  prior  knowledge  or  use  are  suffi- 
ciently specific,  when  they  specify  the  city  in  which  that 
knowledge  or  use  existed  or  occurred,  and  give  the  names 
of  persons  who  had  that  knowledge,  or  who  engaged  in 
that  use,  and  state  in  what  city  those  persons  reside.1 
That  is  to  say :  the  word  "  where  "  and  the  word  "  resi- 
dence," as  those  words  are  used  in  the  statute,  refer  to 
cities,  villages,  or  towns,  as  the  case  may  be,  and  do  not 
refer  to  particular  houses,  factories  or  farms. 

The  names  of  witnesses  as  such,  need  not  be  mentioned 
in  a  notice,  yet  it  is  often  necessary  to  use  as  witnesses, 
persons  who  are  named  in  the  notice  as  having  been  engaged 
in  the  prior  use  to  be  proved,  or  as  having  known  of  the 
anticipating  process  or  thing.  Accordingly  where  a  notice 
alleges  that  A.  B.  used  an  anticipating  machine  in  a  certain 
city,  and  that  C.  D.  had  knowledge  of  that  prior  use,  those 
facts  may  both  be  proved  by  E.  F.  without  mentioning  his 
name  in  the  notice.2  But  if  A.  B.  is  the  only  available  per- 
son by  whom  to  prove  his  prior  use,  or  if  his  testimony  on 
that  point  is  to  be  taken  together  with  that  of  others,  his 
name  must  still  be  mentioned  in  the  notice  :  mentioned  not 
as  a  witness  to  be  called  to  prove  a  fact,  but  as  the  person 
who  transacted  that  fact. 

Notices  need  not  state  the  particular  time  when  an  anti- 
cipating printed  publication  was  published,  nor  when  an 
anticipating  process  or  thing  was  known  or  used  ; 3  but  they 
must  state  the  dates  of  all  alleged  anticipating  patents.4  If 
a  notice  does  unnecessarily  state  a  particular  time,  that 
statement  will  be  regarded  as  harmless  surplusage,  and  a 
variance  therefrom  in  the  evidence,  will  not  render  the  latter 
inadmissible.5 


'Wise  v.  Allis,  9  Wallace,  737,  3  Phillips*.  Page,  24  Howard.  164, 

1869.  1860. 

2  Planing-Machine  Co.  v.  Keith,  4  Revised  Statutes,  Section  4920. 

101  U.   S.  492,  1879 ;  Many  «.  Jag-  6  Phillips  t>.  Page.  24    Howard, 

ger,  1  Blatch.  376,  1843.  164, 1860. 


364  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

§  445.  Where  any  defence  to  a  patent  action  can  be  based 
upon  a  fact  of  which  the  court  will  take  judicial  notice  with- 
out evidence,  that  defence  may  be  made  under  the  general 
issue  without  any  special  pleading.1 

§  446.  The  first  and  second  defences  are  those  which 
come  within  the  rule  of  the  last  section  relevant  to  judicial 
notice.  The  first  defence  is  applicable  mainly  or  only  when 
a  "  principle  "  has  been  patented,  as  for  example  by  the 
eighth  claim  of  Morse,2  or  by  the  anaesthesia  patent  of 
Morton  and  Jackson.3  The  applicability  of  judicial  notice 
to  that  defence  is  perhaps  invariable.  But  where  a  patent 
is  assailed  for  want  of  invention  on  account  of  prior  facts 
which  must  be  proved  by  evidence  in  order  to  be  acted 
upon  by  courts,  there  appears  to  be  no  warrant  for  saying 
that  the  second  defence  need  not  be  pleaded.4  Justice 
requires  that  the  plaintiff  be  notified  beforehand  of  such  a 
defence,  as  truly  as  of  the  defence  of  want  of  novelty  ;  for 
it  may  equally  be  based  on  facts  outside  of  the  patent, 
and  outside  of  the  knowledge  of  the  inventor  and  of  the 
plaintiff. 

§  447.  The  third  defence  may  be  based  upon  a  special 
plea,  instead  of  on  the  general  issue  accompanied  by  notice, 
and  when  that  practice  is  adopted,  that  plea  is  the  only 
notice  which  the  plaintiff  can  claim.5  Federal  courts  of 
equity,  without  any  statute  prescribing  that  course,  have 
always  followed  the  law  relevant  to  notices  of  want  of  nov- 
elty ;  and  have  uniformly  rejected  evidence  on  that  point, 
unless  the*  defendant,  in  his  answer,  gave  the  plaintiff  the 
same  kind  and  degree  of  information  thereof,  that  the  stat- 
ute calls  upon  a  defendant,  who  pleads  the  general  issue  at 
law,  to  give  in  his  notice.6  Courts  of  law  will  probably 


1  May  v.  Juneau  County,  137  U.  Rep.  217,   1893;  Britton  «.   White 
8.  408,  1890.  Mfg.  Co.  61    Fed.    Rep.   95,  1894. 

2  O'Reilly  v.  Morse,   15  Howard,  5  Evans    v.    Eaton,    3    Wheaton 
112,  1853.  504,  1818. 

3  Morton  v.  Infirmary,  5  Blatch.  e  Agawam  Co.  v.  Jordan,  7  Wal- 
116,  1862.  lace,  583,  1868. 

4Brickill  v.   Hartford,    57    Fed. 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  365 

follow  the  salutary  example,  and  will  call  upon  defendants 
who  elect  to  plead  specially,  to  make  their  special  pleas  as 
full  in  this  respect,  as  the  statute  requires  notices  to  be 
when  the  general  issue  is  adopted.  So,  also,  it  has  been 
held  that  special  pleas,  when  used  instead  of  notices,  must 
be  filed  at  least  thirty  days  before  the  term  of  trial,  or  the 
plaintiff  will  be  entitled  to  a  continuance.1  This  holding 
was  so  reasonable  that  it  can  be  supported  on  the  ground 
that  every  court  has  power  to  make  reasonable  rules  to 
regulate  the  time  of  filing  pleas.2  A  special  plea  which  has 
been  stricken  out  by  order  of  court,  cannot  operate  as  a 
notice,  and  thus  furnish  the  foundation  of  a  defence  which 
requires  a  notice  in  the  absence  of  a  special  plea.3  And  a 
plea  or  notice  of  want  of  novelty  must  state  that  the  antici- 
pating fact  occurred  before  the  invention  claimed  by  the 
patent  was  made ;  for  it  is  not  enough  to  state  that  the 
anticipating  fact  occurred  before  the  date  of  the  patent.4 

§  448.  The  fourth  defence  is  not  among  those  which  can 
be  made  under  the  general  issue  accompanied  by  notice. 
There  is  probably  no  case  in  which  it  has  been  successfully 
made  in  equity,  without  being  set  up  in  the  answer  ;  or  at 
law,  without  being  set  up  in  a  special  plea.  In  the  absence 
of  such  precedents,  it  would  be  unsafe  for  a  pleader  to 
attempt  such  an  innovation  on  the  rules  of  the  common 
law. 

§  449.  The  fifth  and  sixth  defences  always  require  evi- 
dence outside  of  the  patent,  and  outside  of  the  doctrines 
of  judicial  notice.  They  may  be  made  under  the  general 
issue  accompanied  by  the  statutory  notice,5  or  under  a 
special  plea,  but  there  is  no  reason  to  suppose  that  they  can 
lawfully  be  made  under  the  general  issue  alone. 

§  450.  The  seventh  defence  is  not  based  on  any  express 
statute.  Its  foundation  is  the  general  spirit  of  the  patent 

1  Phillips  0.  Comstock,  4  McLean,  1849. 

525,  1849.  *  Brickill  v.  Hartford,    57  Fed. 

3  Packet  Co.  •».  Sickles,  19  Wai-  Rep.  219, 1898. 

lace,  611,  1873.  6  Revised  Statutes,  Section'4920. 

3  Foote  v.   Silsby,  1  Blatch.  445, 


366  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

laws ;  and  it  has  been  expounded  in  a  number  of  cases, 
beginning  in  the  case  of  Railway  Co.  v.  Sayles.1  Evidence 
to  support  it  must  always  be  drawn  from  outside  of  the 
patent,  and  must  be  regularly  introduced  into  the  case. 
This  defence  is  therefore  to  be  made  by  a  special  plea, 
when  it  is  made  at  all. 

§  451.  The  eighth  defence  maybe  made  either  by  the  gen- 
eral issue  accompanied  by  notice,2  or  by  a  special  plea.  It 
applies  to  cases  where  another  than  the  patentee  preceded 
him  in  the  first  conception  of  the  'patented  thing,  but  did 
not  precede  him  in  adapting  it  to  actual  use.  If  that  other 
stopped  with  that  conception,  the  validity  of  the  patent  is 
not  affected  thereby,  but  if  he  used  reasonable  diligence  in 
adapting  and  perfecting  the  invention  so  conceived,  no 
subsequent  inventor  can  have  a  valid  patent,  surreptitiously 
or  unjustly  obtained  by  him  for  the  same  invention.  Such 
a  patent  is  surreptitiously  obtained,  where  the  patentee 
appropriates  the  idea  from  the  first  conceiver,  and,  exceed- 
ing him  in  speed,  reduces  the  invention  to  proper  form,  and 
secures  the  patent,  while  the  first  conceiver  is  diligently 
laboring  to  adapt  the  invention  to  use.  Such  a  patent  is 
unjustly  obtained,  if  it  is  issued  to  a  subsequent  inventor, 
without  notice  to  the  first  conceiver,  when  a  caveat  of  the 
first  conceiver  is  on  file  in  the  Patent  Office.3  Where  this 
defence  is  pleaded,  all  its  elements  must  be  incorporated  in 
the  plea.  The  allegation  of  unjust  or  surreptitious  obtain- 
ing of  the  patent,  must  be  accompanied  by  an  allegation 
that  the  first  conceiver  was  at  the  time  using  reasonable 
diligence  in  adapting  and  perfecting  the  invention.4 

§  452.  The  ninth  and  tenth  defences  are  based  on  the  fact 
that  patents  can  lawfully  be  granted  to  no  one  but  the 


1  Railway  Co.  v.  Sayles,  97  U.  S.  Rep.  126.  1895. 

563,    1878;    Consolidated   Electric  2  Revised  Statutes,  Section  4920. 

Light  Co.  v.  McKeesport  Light  Co,  3  Phelps  v.  Brown,  4  Blatch.  362. 

40  Fed.    Rep.  26,    1889;    Beach  v.  1859. 

Box  Machine  Co.  63  Fed.  Rep.  604,  '    4  Agawam  Co.  v.  Jordan,  7  Wai- 

1894; '  Michigan    Central   Railroad  lace,  583,  1868. 
Co.    v.    Car-Heating    Co.   67  Fed. 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  367 

inventors  of  the  things  covered  thereby,  or  to  those  who 
represent  them  as  assigns  or  legal  representatives.1  Neither 
of  those  defences  can  ever  receive  any  support  from  the 
face  of  the  patent,  or  from  any  fact  of  which  any  court  can 
take  judicial  notice.  Both  depend  upon  evidence  aliunde, 
and  either  must  be  interposed  in  a  special  plea,  for  the 
statute  does  not  include  either  among  those  defences 
which  may  be  made  under  the  general  isssue  accompanied 
by  notice.2 

§  453.  The  eleventh  defence  may  be  set  up  under  the 
general  issue  accompanied  by  notice,3  or  in  a  special  plea. 
It  is  a  defence  which  is  oftener  put  in  by  pleaders  who  are 
at  a  loss  how  to  defend,  than  it  is  by  those  who  assail  pat- 
ents intelligently.  It  has  seldom  or  never  been  made  with 
success,  because  patents  are  seldom  or  never  obnoxious  to 
the  objection  which  it  involves.  Even  where  a  patent  does 
contain  too  much  or  too  little,  this  defence  does  not  apply, 
unless  the  fault  was  intended,  and  was  intended  to  deceive 
the  public.4 

§  454.  The  twelfth  defence  is  somewhat  similar  to  the  first 
member  of  the  eleventh  ;  but  unlike  that,  it  cannot  be  based 
on  the  general  issue  accompanied  by  notice ;  and  it  does 
not  require  the  element  of  intention  to  deceive.  It  is  based 
upon  that  provision  of  the  statute  which  makes  a  full,  clear, 
concise,  and  exact  description  of  the  invention  a  prerequi- 
site to  the  jurisdiction  of  the  Commissioner  to  grant  a  pat- 
ent.5 If  a  patent  falls  below  the  statutory  requirement  in 
that  respect,  that  patent  is  void.6  Whether  a  given  patent 
does  so  fall  is  a  question  of  evidence  and  not  of  construc- 
tion.7 Therefore  this  defence  cannot  be  made  by  demurrer.8 

1  Sections  50  and  51  of  this  book.  6  O'Reilly  •».  Morse,  15  Howard, 

2  Butler  v.  Bainbridge,  29  Fed.  62,  1853;  Pacific  Cable  Ry.  Co.  t>. 
Rep.  143,  1886.  Butte  City  Ry.  Co.  58  Fed.  Rep. 

3  Revised  Statutes,  Section  4920.  422,  1893. 

4  Hotchkiss  v.  Oliver,  5    Denio  7  Loom  Co.  «.  Higgins,  105  U.  8. 
(N.  Y.),  314,  1848;    Celluloid  Mfg.  580,  1881. 

Co    v.  Russell,  37  Fed.  Rep    679,          »  Chase  *.  Fillebrown,   58  Fed. 
1889.  Rep.  376, 1893. 

5  Revised  Statutes,  Section  4888. 


368  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

This  defence  must  be  interposed  in  a  special  plea ;  for 
neither  the  statute  nor  any  precedent  contemplates  its 
being  based  on  the  general  issue,  either  with  or  without 
notice ;  and  still  less  does  any  rule  of  law  provide  for  its 
being  made  on  the  trial  of  an  action  without  being  pleaded 
at  all. 

§  455.  The  thirteenth  defence  is  based  on  the  statute 
which  requires  that,  before  any  inventor  shall  receive  a 
patent  for  his  invention,  he  shall  particularly  point  out, 
and  distinctly  claim,  the  part,  improvement  or  combination 
Avhich  he  claims  as  his  invention.1  It  is  a  defence  of  decided 
merit,  aimed  by  the  policy  of  the  law  at  nebulous  claims. 
The  courts  have  not  heretofore  gone  quite  so  far  in  uphold- 
ing this  defence  as  the  statute  would  perhaps  justify. 
Probably  the  strongest  judicial  language  heretofore  used 
on  the  subject  is  that  of  the  Supreme  Court  in  the  case  of 
Carlton  v.  Bokee.2  In  that  case  Justice  BRADLEY,  in  deliv- 
ering the  opinion,  said  that:  "Where  a  specification,  by 
ambiguity  and  a  needless  multiplication  of  nebulous  claims, 
is  calculated  to  deceive  and  mislead  the  public,  the  patent 
is  void."  This  defence  may  be  made  by  demurrer  ;3  because 
the  question  of  the  validity  of  a  patent,  as  against  it,  is  a 
question  of  construction  of  the  document,  to  decide  which, 
a  judge  will  seldom  require  aid  from  other  evidence  than 
the  letters  patent  themselves.  But  a  special  plea  is  prob- 
ably the  best  means  of  interposing  this  defence ;  though 
there  is  less  meritorious  necessity  for  special  pleading  to 
support  it  than  there  is  to  support  any  other  defence  which 
assails  the  validity  of  a  patent. 

§  456.  The  fourteenth  defence  is  based  upon  the  statute 
which  provides  that  where  a  new  invention  and  an  old  one 
are  both  claimed  in  a  patent,  the  patentee  may  sustain  an 
action  on  the  former,  but  not  unless  he  disclaims  the  latter 
without  unreasonable  delay.4  That  the  old  invention  was 


1  Revised  Statutes,  Section  4888.          3  Brickill  v.  Hartford,  49  Fed.  Rep. 

2  Carlton  «.  Bokee,  17  Wallace,      373,  1892. 

472,  1873.  4  Revised  Statutes,  Section  4922. 


CHAP.  XVHI.]          ACTIONS  AT  LAW.  369 

old,  and  that  the  delay  to  disclaim  it  was  unreasonable,  are 
matters  of  fact  depending  upon  evidence.  There  is  there- 
fore no  reason  to  suppose  that  this  defence  can  be  made  in 
any  action  at  law,  without  a  special  plea  to  give  it  entrance. 

§  457.  The  fifteenth  defence  goes  to  the  jurisdiction  of 
the  Commissioner  to  reissue  the  patent  in  suit.  In  the 
chapter  on  reissues  the  defence  is  discussed  with  some  ful- 
ness.1 Whatever  doubt  may  exist  relevant  to  its  scope, 
it  is  clear  that  the  questions  which  are  involved  in  its  appli- 
cability to  a  particular  case  are  mainly  questions  of  fact, 
depending  upon  evidence  inpais,  and  that  a  special  plea  is 
therefore  the  proper  means  of  bringing  it  to  the  attention 
of  the  court. 

§  458.  The  sixteenth  defence  originated  in  the  year  1882,2 
and  though  not  based  on  the  letter  of  any  statute,  it  has 
been  many  times  enforced.  The  first  element  in  its  founda- 
tion is  a  point  of  comparative  construction  of  the  original 
and  the  reissue  patent.  But  inasmuch  as  a  plaintiff,  suing 
on  a  reissue,  need  not  introduce  the  original  in  evidence, 
even  that  element  depends  upon  proof  by  the  defendant  of 
the  contents  of  the  original.  The  second  element  is  a  vari- 
able quantity,  for  the  particular  length  of  time  between  the 
date  of  an  original  and  the  application  for  a  reissue  patent, 
which  will  be  fatal  to  a  broadened  reissue,  depends  upon 
the  circumstances  of  each  case,  and  those  circumstances  can 
be  made  known  to  the  court  through  evidence  alone.  These 
considerations  point  to  the  propriety  of  disregarding  this 
defence,  in  an  action  at  law,  unless  it  is  set  up  in  a  special 
plea,  and  the  plaintiff  thus  notified  of  what  he  must  meet 
on  the  trial. 

§  459.  The  seventeenth  defence  depends  upon  proof  of 
the  original  patent,  and  requires  at  least  that  amount  of 
evidence  to  support  it.  In  cases  where  the  question  of 
sameness  or  difference  of  invention  is  a  complicated  one, 
courts  may  require  the  benefit  of  evidence  on  that  subject 


Section  221  of  this  book.  2  Miller  e.  Brass  Co.  104  U.  S 

350,  1884. 


370  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

to  aid  them  in  deciding  the  point.  In  order  to  give  both 
sides  an  opportunity  to  produce  such  evidence,  a  special 
plea  seems  necessary ;  but  it  has  been  decided  that  a  gen- 
eral denial  of  the  declaration  is  enough.1 

§  460.  The  eighteenth  defence  can  be  made  by  a  demurrer 
in  a  case  which  is  based  on  the  prior  patent,  as  well  as  on 
its  alleged  double ; 2  but  in  other  cases  it  requires  a  special 
plea,  because  it  is  a  defence  in  confession  and  avoidance  of 
the  declaration. 

§  461.  The  nineteenth  defence  will  of  course  require  evi- 
dence of  the  record  of  the  court  which  repealed  the  patent. 
But  as  that  record  cannot  be  contradicted  by  any  evidence, 
and  as  no  repeal  could  have  been  had  without  the  knowl- 
edge of  the  plaintiff  or  his  privies,  there  seems  to  be  no 
meritorious  reason  why  a  special  plea  should  be  insisted 
upon  to  sustain  this  defence.  But  in  the  absence  of  a 
precedent,  that  will  be  the  safest  pleading  for  the  defendant 
to  file. 

§  462.  The  twentieth  defence  demands  a  special  plea, 
because  the  evidence  to  prove  it  must  come  from  outside 
of  the  patent,  and  when  produced,  it  must  generally  be 
supported  by  expert  testimony  that  the  foreign  patent  pro- 
duced is  really  one  for  the  same  invention  as  the  United 
States  patent  in  suit.  Indeed,  the  defence  may  fail  even 
then,  for  it  cannot  stand  against  proof  that  the  foreign 
patent  was  surreptitiously  taken  out  by  another  than  the 
United  States  patentee,  and  without  his  knowledge  or  con- 
sent. It  would  be  highly  unjust  to  allow  a  plaintiff  to  be 
surprised  on  the  trial  of  an  action  at  law  with  proof  of  a 
foreign  patent  for  his  invention  granted  to  another,  after 
his  invention  was  made,  but  before  the  date  of  his  patent. 
Such  a  piece  of  evidence,  if  unexplained,  would  limit  the 
duration  of  the  United  States  patent,  and  thus  perhaps 
defeat  the  suit.3  But  if  the  plaintiff  could  have  time  to 


1  Oregon  Imp.  Co    v.   Excelsior      581,  1894 

Coal  Co.  132  U.  S.  215,  1889.  3  Revised  Statutes,  Section  4887. 

2  Russell  v.  Kern,  64  Fed.  Rep. 


CHAP.   XVIII.]  ACTIONS   AT  LAW.  371 

prove  that  it  was  granted  without  the  knowledge  or  consent 
of  the  inventor  or  patentee,  it  would  have  no  unfavorable 
effect  upon  his  rights.  It  is  clear,  therefore,  that  no  such 
issue  ought  to  be  sprung  upon  a  plaintiff  when  before  the 
court.  A  special  plea  is  requisite  to  give  him  notice  of  a 
fact  apparently  so  unfavorable,  but  which  may  really  be 
harmless  when  explained. 

§  463.  The  twenty-first  defence  can  be  made  under  the 
general  issue,  for  it  must  be  negatived  in  the  declaration.1 

§  464.  The  twenty-second  defence  can  be  made  under 
the  general  issue,  where  the  defendant  merely  proposes  to" 
argue  that  the  plaintiff's  evidence  does  not  make  out  any 
title,  or  makes  out  no  such  title  as  enables  him  to  sue  in  an 
action  at  law.  But  where  the  defendant  attacks  the  plain- 
tiffs title  on  the  basis  of  a  paramount  assignment  to  another 
he  ought  to  plead  the  defence  specially,  for  otherwise  the 
plaintiff  might  be  surprised  on  the  trial  with  evidence  which, 
with  a  little  time  for  preparation,  he  could  perhaps  explain 
away,  or  perhaps  overthrow. 

§  465.  The  twenty-third  and  twenty-fourth  defences  both 
required  to  be  pleaded  specially  according  to  the  pleading 
rules  of  the  ancient  common  law.2  But  under  the  relaxa- 
tion which  obtained  in  England,  late  in  the  last  century, 
they  could,  in  ordinary  cases,  have  been  proved  under  the 
general  issue.3  That  relaxation  does  not,  however,  deserve 
to  be  extended  by  any  process  of  reasoning  by  analogy ; 
and  it  is  possible  that  the  courts  will  hold  that  it  does  not 
apply  to  patent  litigation  in  the  United  States. 

§  466.  The  twenty -fifth  defence  is  one  to  which  the  plea 
of  the  general  issue  is,  and  always  was,  appropriate,  for  it 
is  a  defence  which  consists  simply  in  a  denial  of  the  alleged 
infringement.4  And  even  where  a  proper  defence  of  non- 
infringement  involves  evidence  of  the  state  of  the  art,  the 
general  issue  is  a  sufficient  plea  under  which  to  make  such 


1  Dunlap  e.  Schofteld,  152  U.  S.         8  1  Chitty  on  Pleading,  491. 
244,  1894.  4  Stephen  on  Pleading,  160. 

2  Stephen  on  Pleading,  158. 


372  ACTIONS   AT   LAW.  [CHAP.    XVIII. 

a  defence,  because  no  notice  to  the  plaintiff  is  necessary  to 
render  such  evidence  admissible.1 

§  467.  The  twenty-sixth  defence  is  as  proper  in  an  action 
at  law  as  it  is  in  an  action  in  equity.2  Estoppels  in  patent 
cases  are  like  those  in  other  cases,  in  that  they  are  divisible 
into  three  classes  :  Estoppels  by  matter  of  record  ;  by  mat- 
ter of  deed ;  and  by  matter  in  pais.  The  principles  of 
estoppel  constitute  a  systematic  department  of  the  law,  to 
the  delineation  and  development  of  which  a  number  of 
text-writers  have  devoted  careful  and  thorough  considera- 
tion. No  extensive  discussion  of  the  subject  is  therefore  to 
be  expected  in  this  book.  Something  has  already  been 
written  about  estoppel  in  pais,  in  connection  with  the  sub- 
ject of  implied  licenses.3  And  it  may  be  mentioned  here, 
that  a  defendant  is  not  estopped  from  denying  the  validity 
of  a  patent,  by  the  fact  that  he  formerly  thought  and  rep- 
resented it  to  be  valid,4  or  the  fact  that  he  once  made  an 
application  himself,  for  a  patent  on  the  same  invention.5 
And  something  more  may  be  added  in  this  place,  about 
estoppels  by  matter  of  record,  and  by  matter  of  deed,  for 
the  patent  precedents  contain  a  few  cases  in  which  those 
doctrines  have  been  applied  to  controversies  touching  let- 
ters patent  for  inventions.  But  the  investigator  will  often 
need  to  resort  to  the  standard  text-books  on  estoppel,  when 
seeking  for  the  law  applicable  to  such  matters,  as  they  may 
hereafter  arise  in  patent  litigation  ;  for  the  instances  in 
which  the  doctrines  of  estoppel  have  heretofore  been 
applied  to  patent  cases  are  comparatively  few.  Those 
doctrines  may,  however,  be  deduced  from  other  kinds  of 
causes,  and  then  applied  in  patent  litigation  with  all  their 
inherent  forces.6 

1  Dunbar  v.  Myers,  94  U.  S.  198,          4  De  La  Vergne    Mach.    Co.    t>. 
1876;  Eachus  v.   Broomall,   115  U.      Featherstone,    49    Fed.    Rep.    919, 
S.  434,  1885;  Grier  v.   Wilt,  120  U.       1892. 

S.  429,  1886.  5  Page  ®.  Buckley,  67  Fed.  Rep. 

2  Dickerson  v.  Colgrove,    100  U.      142,  1895. 

S.    584,    1879;    City  of   Concord  v.          "Duboiserc.  Railroad  Co.  5  Fisher, 
Norton,  16  Fed.  Rep.  477,  1883!  208,  1871. 

3  Section  313  of  this  book. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  373 

§  468.  Estoppel  by  matter  of  record  arises  out  of  the 
doctrine  of  res  judicata  ;  and  indeed  that  sort  of  estoppel 
generally  and  properly  passes  under  the  name  of  that  doc- 
trine. It  is  a  requirement  of  public  policy  and  of  private 
peace,  that  each  particular  litigation  shall  duly  come  to  an 
end,  and  that  when  once  ended,  it  shall  not  be  revived. 
The  law  therefore  properly  requires  that  things  adjudicated 
shall  not  again  be  drawn  in  question  between  the  same 
parties,  or  between  any  persons  whose  connection  with  the 
adjudication  is  such  that  they  ought  not  to  be  permitted  to 
gainsay  its  result.1  But  things  are  not  adjudicated  in  this 
sense  till  they  are  adjudicated  finally.  Interlocutory 
decrees,  therefore,  furnish  no  foundation  for  a  plea  of  res 
judicata?  except  where  such  an  interlocutory  decree  is  fol- 
lowed by  a  final  decree  soon  enough  for  the  latter  to  be 
invoked.3  And  it  is  only  in  respect  of  questions  actually 
litigated  and  decided  in  a  prior  case,  that  the  judgment  is 
conclusive  in  another  action,4 

A  final  decree  is  pleadable,  in  a  subsequent  action,  not- 
withstanding the  defendant  may  have  new  defences  to 
interpose :  defences,  which  he  did  not  deem  it  necessary  to 
make  to  the  former  suit,  or  did  not  learn  of  in  time  to  set 
them  up  in  the  former  litigation.5  And  final  decrees  or 
judgments  are  not  only  binding  on  the  parties  to  the  actions 
from  which  they  resulted,  but  they  are  also  binding  upon 
all  persons  who  purchase  interests  in  the  subject-matter  of 
litigation  after  such  decrees  of  judgments  are  entered  ; 6 


1  Heysinger  «.    Rouss,   40  Fed.  Rep.  751,  1894. 

Rep.  584,  1889.  6  Duboise  v.  Railroad  Co.5  Fisher, 

2  Rumford  Chemical   Works  v.  210,  1871:  Gloucester  Isinglass  Co. 
Hecker,  2  Bann.  &  Ard.  359,  1876;  v.  LePage,  30  Fed.  Rep.  371,  1887; 
Roemer  v.  Neumann,  26  Fed.  Rep.  Bradley  Mfg.  Co.  v.  Eagle  Mfg.  Co. 
332,  1886;  Morss  v.  Knapp,  37  Fed.  57  Fed.   Rep.   989,   1893;  Mack  v. 
Rep.  353,  1889;  Harmon  «.  Struth-  Levy,  60  Fed.  Rep.  752,  1894. 

ers,  48  Fed.  Rep.  260,  1891.  «  Consolidated  Fruit  Jar  Co.  v. 

3  Bradley  Mfg.  Co.  v.  Eagle  Mfg.  Whitney,  2  Bann.  &  Ard.  33,  1875; 
Co.  57  Fed.  Rep.  985,  1893.  Pennington   v.  Hunt,  20  Fed.  Rep. 

4  Bruise,®.  Peck,  54  Fed.   Rep.  195,1884. 
822,   1893;  Mack  «.  Levy,  60  Fed. 


374  ACTIONS   AT   LAW.  [CHAP.    XVIII. 

and  upon  all  persons  who  assumed  the  control  and  expense 
of  the  former  litigation,  even  though  not  parties  thereto.1 
So,  also,  judgments  by  default,  decrees  pro  confesso  and  con- 
sent decrees  are  pleadable  as  res  judicata,  if  they  are  final 
in  their  nature,  with  the  same  effect  as  are  judgments  or 
decrees  which  were  rendered  after  a  long-contested  litiga- 
tion.2 But  in  order  to  be  binding  on  either  party  to  a  new 
action,  a  former  judgment  or  decree  must  be  binding  on 
both.3  No  former  adjudication  is  pleadable  in  favor  of 
either  party  to  a  suit  unless  it  would  have  been  pleadable 
against  him,  if  it  had  been  rendered  the  other  way.4  But 
a  decree  may  be  pleadable  against  a  complainant,  only  on 
a  single  point  in  a  subsequent  case,  though  it  would  have 
been  pleadable  against  the  defendant  on  all  the  points  in 
that  case,  if  it  had  been  rendered  the  other  way  ;  because  to 
be  rendered  the  other  way,  all  those  points  would  have  to 
be  decided  for  the  complainant,  whereas  only  one  of  those 
points  might  have  to  be  decided  against  the  complainant, 
in  order  to  necessitate  a  decree  for  the  defendant.5  On  the 
other  hand,  a  decree  may  be  pleadable  for  the  complainant, 
only  on  the  subject  of  the  validity  of  his  patent,  and  not 
upon  the  question  of  its  infringement  by  the  defendant.6 

§  469.  Estoppel  by  matter  of  deed  may  also  arise  in  pat- 
ent affairs.  Where,  for  example,  an  assignor  or  grantor  of 
a  patent  right,  afterwards  infringes  the  right  which  he 


1  United    States    Felting  Co.   ».  31  Fed.  Rep.  35i>,  1887. 
Asbestos  Felting  Co.  4  Fed.  Rep.  3  Mack  v.  Levy,  60  Fed.  Rep.  752, 
816,  1880;  American  Bell  Telephone  1894. 

Co.  v.  National  Telephone  Co.  27  4  Ingersoll  ®.  Jewett,  16  Blatch. 

Fed.  Rep.  665,    1886;    Eagle  Mfg.  378,    1879;    Dale    v.    Rosevelt,    1 

Co.  v.    Miller,   41   Fed.  Rep.   357,  Paige  (N.  Y.),  35,  1828;  Paynes  «. 

1890;    Eagle  Mfg.   Co.  v.   Bradley  Coles,  1  Mumford  (Va.),  394,  1810; 

Mfg.  Co.  50  Fed.  Rep.    193.  1891;  Greene  v.   City  of  Lynn,   55  Fed. 

Bradley  Mfg.  Co.  v.  Eagle  Mfg.  Co.  Rep  522,  1893. 

57  Fed.  Rep.  985.  1893.  5  Steam  Gauge  &  Lantern  Co.  v. 

2  Bradford  «.   Bradford,  5   Con-  Meyrose  27  Fed.  Rep.  213,  1886. 
necticut,  131,  1823;  Davis  v.  Mur-  e  Bradley  Mfg  Co.  v.  Eagle  Mfg. 
phy,  2  Rich.   (S.  C.),    560,    1846;  Co.  57  Fed.  Rep.  988,  1893. 
United  States  Packing  Co.  «.  Tripp, 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  375 

conveyed,  he  is  estopped  by  bis  conveyance,  from  denying  the 
plaintiffs  title,1  or  the  validity  of  the  patent,  when  sued  for 
its  infringement,2  even  where  the  invalidity  is  due  to  an 
unlawful  reissue  obtained  after  the  assignment.3  But  such 
an  assignor  or  grantor  is  not  estopped,  by  his  conveyance, 
from  showing  how  narrowly  the  patent  must  be  construed.4 

§  470.  The  defence  of  estoppel  requires  a  special  plea  to 
introduce  it  into  a  litigation.  Thus,  for  example,  if  a 
former  judgment  or  decree  is  not  pleaded  as  an  estoppel 
by  a  defendant,  he  refers  the  merits  of  the  controversy 
anew  to  the  court.  The  former  adjudication  may  be  used 
as  an  argument,  but  it  cannot  be  relied  upon  as  a  bar,  unless 
it  is  set  up  in  a  special  plea.5 

§  471.  The  twenty-seventh  defence  may  be  made  by 
demurrer,6  but  if  not  so  interposed  it  must  always  be 
specially  pleaded  by  the  defendant,  or  it  will  be  disregarded 
by  the  court.7  No  defendant  can  avail  himself  of  any 
statute  of  limitation,  upon  the  general  issue.8 

§  472.  Section  55  of  the  Patent  Act  of  1870  related  to 
remedies  for  infringements  of  patents,  and  its  final  clause 
provided  that :  "  All  actions  shall  be  brought  during  the 
term  for  which  the  letters  patent  shall  be  granted  or 
extended,  or  within  six  years  after  the  expiration  thereof."- 
That  enactment  continued  to  be  in  full  force  until  the  pas- 
sage of  the  Revised  Statutes,  June  22,  1874.  It  was,  how- 
ever, omitted  from  that  compilation,  and  by  operation  of 


1  Woodward    v.    Lasting  Mach.  607,  1894;  Western  Telephone  Con- 
Co.  60  Fed.  Rep.  284,  1894.  struction  Co.  v.  Stromberg,  66  Fed. 

2  Consolidated  Middlings  Purifier  Rep.  551, 1895;  Martin  Cash  Carrier 
Co.  v.   Guilder,  9  Fed.    Rep.    156.  Co.®.  Martin, 67  Fed.  Rep.  787,1895. 
1881;  Adeefl.  Thomas,  41  Fed.  Rep.  3  1  Chitty  on  Pleading,  509. 

345, 1890;  Corbin  Lock  Co.  «.  Yale  «  Brickill  «.  Hartford,  49  Fed. 

&  Towne  Mfg.  Co.   58  Fed.  Rep.  Rep.  373,  1882. 

565,  1893;  Martin  &  Hill  Cash  Car-  7  1  Chitty  on  Pleading,  498. 

rier  Co.  v.  Martin,  67  Fed.  Rep.  8  Neale  v.  Walker,  1    Cranch's 

787,  1895.  Circuit  Court  Reports,  57,  1802. 

»  Burdsall  v.  Curran,  31  Fed.  Rep.  9  16  Statutes  at  Large,  Ch.  230, 

919,  1887.  Sec.  55,  p.  206. 

4  Babcock  v.  Clarkson .  63  Fed.  Rep. 


•'->76  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

Section  5596  was  thereby  repealed  as  to  all  rights  of  action 
thereafter  to  accrue ;  but  by  virtue  of  Section  5599  it  was 
left  in  full  force  as  to  all  rights  of  action  in  existence  at  the 
date  of  the  repeal.1  No  further  national  legislation  has 
been  had  relevant  to  the  subject  up  to  the  time  of  the  pub- 
lication of  this  book.  This  national  statute  of  limitation 
has  no  application  to  any  infringement  committed  since 
June  22,  1874.  It  applies  fully  to  all  infringements  com- 
mitted between  that  day  and  July  8,  1870,  the  day  whereon 
it  was  enacted.  To  what  extent  it  applies  to  infringements 
of  unextended  patents  committed  before  the  latter  date,  and 
how  it  applies  to  infringements  of  the  original  terms  of 
extended  parents,  are  intricate  questions  which  are  dis- 
cussed in  Sections  473,  474  and  475  of  the  former  editions 
of  this  book,  but  which  are  now  obsolete. 

§  476.  State  statutes  of  limitation  can  never  apply  to  any 
right  of  action  under  a  patent,  if  that  particular  right  is 
subject  to  the  running  of  a  national  statute  of  limitation.2 
This  point  of  law  follows  from  the  fact  that  the  States  have 
no  right  to  control  the  operation  of  the  patent  laws ; 3  and 
from  the  fact  that  Congress  never  adopted  State  laws  for 
the  government  of  Federal  courts  in  any  case  where  the 
constitution,  treaties  or  statutes  of  the  United  States  spec- 
ially attend  to  the  subject.4 

§  477.  State  statutes  of  limitation  on  torts  unaccompanied 
by  force,  apply  to  such  rights  of  action  for  infringements  of 
patents,  as  are  not  subject  to  any  national  statute  of 
limitation.5 

§  478.  Replications  and  subsequent  pleadings  are  seldom 
required  in  patent  cases,  because  most  of  the  pleas  applica- 
ble to  such  cases  are  pleas  in  bar  by  way  of  traverse,  and 

1  Hayden    v.   Oriental    Mills,   22      Logan,  30  Fed.  Rep.  256,  1887. 
Fed.  Rep  103,  1884,  May  v.  County          3  M'Culloch  v.  Maryland,  4  Whea- 
of    Buchanan,   29    Fed.   Rep.   470,       ton,  436,  1819. 

1886;  May  v.  County  of  Logan,  30  *  Revised  Statutes,  Sec.  721;  Sec. 

Fed.  Rep.  256,  1887.  34  of  the  Judiciary  Act  of  1789;  1 

2  Sayles  «.  Oregon  Central  Rail-  Statutes  at  Large,  Ch.  20,  p.  92. 
road  Co.  4  Bann.  &  Ard.  429,  1879;  5  Campbell  v.  Haverhill,   155  U. 
Hayden  «.  Oriental  Mills,  22  Fed.  8.  613,  1895. 

Rep.  103,  1884;  May  v.  County  of 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  377 

not  by  way  of  confession  and  avoidance.1  The  principal 
exceptions  are  the  plea  of  a  license,  the  plea  of  a  release, 
and  the  plea  of  a  statute  of  limitation.  If  the  plaintiff  pur- 
poses to  deny  the  existence  of  a  license  or  release,  as  the 
case  may  be,  his  replication  should  be  by  way  of  traverse 
to  the  plea,  and  should  conclude  to  the  country,  and  thus 
tender  issue.  So,  also,  if  the  plaintiff  can  show  that  the 
license  or  release  covered  only  a  part  of  the  infringement 
covered  by  the  declaration,  the  general  replication  by  way 
of  traverse  will  be  sufficient.2  If  the  plaintiff  cannot  deny 
the  existence  of  a  full  paper,  but  purposes  to  show  that  it 
was  obtained  by  duress  or  by  fraud,  or  that  it  has  been 
effectually  revoked,  his  replication  will  state  the  facts  by 
way  of  confession  and  avoidance  of  the  plea,  and  will  con- 
clude with  a  verification.  It  will  then  be  the  duty  of  the 
defendant  to  file  a  rejoinder  to  the  replication.  If  he  can 
deny  the  duress,  or  the  fraud,  or  the  revocation,  as  the  case 
may  be,  his  rejoinder  will  be  by  way  of  traverse,  and  will 
conclude  by  tendering  issue.  If,  however,  he  cannot  deny 
the  truth  of  the  replication,  but  can  avoid  its  effect  by  show- 
ing that  the  plaintiff  freely  ratified  the  license  or  release 
after  the  alleged  duress  terminated,  or  the  alleged  fraud 
became  known  to  him,  or  that  he  annulled  the  revocation 
after  making  it,  then  the  defendant's  rejoinder  will  be  by 
way  of  confession  and  avoidance,  and  will  conclude  with  a 
verification,  and  will  render  necessary  a  sur-rejoinder  from 
the  plaintiff,  denying  the  truth  of  the  rejoinder,  and  putting 
himself  upon  the  country. 

§  479.  When  pleaded  to  an  action  based  on  an  infringe- 
ment committed  before  June  22,  1874,  the  national  statute 
of  limitation  will  require  a  replication  by  way  of  traverse, 
if  the  plaintiff  intends  to  show  that  the  action  was  brought 
during  the  term  for  which  the  patent  was  granted  or 
extended,  or  within  six  years  after  the  expiration  thereof. 
If  he -cannot  show  that,  it  will  be  useless  for  him  to  prose- 
cute his  action  further. 

i  Brickill  «.   Hartford,  57  Fed.          2  1  Chitty  on  Pleading,  596. 
Rep.  219,  1893. 


378  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

§  480.  A  State  statute  of  limitation,  when  pleaded  to  an 
action  based  on  an  infringement  of  a  patent,  if  it  is  not 
successfully  met  by  a  demurrer,  will  require  a  replication 
by  way  of  confession  and  avoidance,  based  on  some  cause 
which,  according  to  the  laws  of  the  particular  State  in  which 
the  suit  is  pending,  is  sufficient  to  take  the  case  out  of  the 
statute.  If  there  is  no  such  cause,  the  plaintiff  must  aban- 
don his  action,  or  he  may  stand  upon  his  demurrer,  and 
having  suffered  judgment,  go  to  the  Circuit  Court  of  Appeals 
on  a  writ  of  error.  If  such  a  replication  is  filed,  the  defend- 
ant must  file  a  rejoinder  by  way  of  traverse,  and  tender 
issue  by  putting  himself  upon  the  country. 

§  481.  A  similiter  must  be  filed  or  added  by  or  on  behalf 
of  the  other  party,  whenever  either  the  plaintiff  or  defend- 
ant properly  tenders  issue.  As  the  party  to  whom  issue  is 
well  tendered,  has  no  option  but  to  accept  it,  the  similiter 
may  be  added  for  him.  It  is  a  mere  matter  of  form,  but 
it  is  a  form  which  should  always  be  attended  to  in  common- 
law  pleading.  Its  omission  has  sometimes  constituted  a 
fatal  defect.1 

§  482.  A  demurrer  may  be  interposed  by  either  party  in 
an  action  at  law,  to  any  pleading  of  his  opponent,  except 
another  demurrer.2  When  a  demurrer  is  interposed,  the 
court  will  examine  all  the  pleadings  in  the  case,  and  will 
generally  decide  against  the  party  who  first  filed  a  substan- 
tially defective  one.3  The  principal  exception  to  this  rule 
is,  that  where  the  declaration  is  the  pleading  demurred  to, 
the  demurrer  will  not  be  sustained  if  it  is  too  large  ;  that  is, 
if  it  is  pointed  at  an  entire  declaration,  some  independent 
part  of  which  is  good  in  law.4  This  exception  does  not 
apply  to  demurrers  to  pleas,5  or  replications,6  or  rejoinders,7 
for  it  is  in  the  nature  of  those  pleadings  to  be  entire,  and 
if  bad  in  part,  to  be  bad  for  the  whole. 


1  Earle    v.    Hall,    22    Pickering  4  1  Chitty  on  Pleading,  665. 
(Mass.),  102,  1839.  5  1  Chitty  on  Pleading,  546. 

2  1  Chitty  on  Pleading,  661,  666.  6  1  Chitty  on  Pleading,  644. 

3  1  Chitty  on  Pleading,  668.  7 1  Chitty  on  Pleading,  651. 


CHAP.    XVIII.]  ACTIONS    AT   LAW.  379 

§  483.  Demurrable  declarations  occur  iu  patent  cases  when 
the  patent  appears  to  be  void  on  its  face,  or  by  reason  of 
some  fact  within  judicial  notice ;  or  when  the  plaintiff's 
pleader  omits  some  of  the  allegations  which  are  necessary 
parts  of  such  a  pleading ;  or  when  he  makes  those  allega- 
tions in  improper  form  ;  or  where  he  makes  the  statement 
of  infringement  cover  a  space  of  time,  part  or  all  of  which 
is  remote  enough  to  be  barred  by  some  applicable  statute 
of  limitation.  It  will  rarely  occur  that  the  whole  of  an  in- 
fringement declared  upon  can  plausibly  be  claimed  to  be 
barred  by  a  statute  of  limitation ;  but  it  may  not  be  un- 
known for  declarations  to  allege  that  the  infringement  sued 
on  began  at  a  point  of  time  more  than  six  years  before  the 
beginning  of  the  action,  and  waa  continued  till  after  that 
limit  was  passed.  If,  in  such  a  case,  the  defendant  would 
interpose  a  six-year  State  statute  of  limitation  to  that  part 
of  the  infringement  which  occurred  more  than  six  years 
before  the  bringing  of  the  suit,  he  may  do  so  by  a  special 
demurrer  aimed  at  the  questionable  part  of  the  right  of 
action.  If,  in  such  a  case,  he  demurs  generally  to  the  whole 
declaration,  his  demurrer  will  be  overruled,  because  it  will 
appear  on  the  argument  that  an  independent  divisible  part 
of  the  right  of  action  sued  upon  is  unbarred  by  the  statute.1 

§  484.  Demurrable  pleas  occur  in  patent  cases  whenever 
the  facts  stated  therein  constitute  no  defence  to  the  action  ; 
or  when  they  are  in  improper  form  ;  or  when  a  statute  of 
limitation  is  pleaded  to  the  whole  of  a  right  of  action,  only 
a  part  of  which  is  old  enough  to  be  barred  thereby,  for  a 
plea  which  is  bad  in  part,  is  bad  altogether.2 

§  486.  A  joinder  in  demurrer  is  the  proper  response  to 
such  a  pleading  in  a  patent  action,  as  well  as  any  other.  If 
a  plaintiff  attempts  to  demur  to  a  demurrer,  or  refuses  to 
join  issue  of  law  upon  it,  he  thereby  discontinues  his 
action;  and  if  a  defendant  does  so,  he  discontinues  his 
defence.3 


1 1  Chitty  on  Pleading,  665.  3  Gould's    Pleadings,  Chap.   IX, 

•2  1  Chitty  on  Pleading,  546.  See.  33 ;  1  Chitty  on  Pleadings,  169. 


380  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

But  the  actual  tiling  in  writing  of  a  joinder  in  demurrer 
is  generally  waived,  and  the  demurrer  brought  on  for  argu- 
ment without  that  formality. 

When  a  demurrer  to  an  entire  declaration  is  sustained, 
on  a  ground  which  cannot  be  cured  by  amendment,  the 
plaintiff  may  file  an  exception,  and  take  the  case  to  the  Cir- 
cuit Court  of  Appeals  for  a  review  of  the  decision  upon  the 
demurrer;  and  he  must  do  so,  or  abandon  his  action.  But 
where  a  demurrer  to  a  declaration  is  overruled,  the  defend- 
ant may  either  file  an  exception  and  take  the  case  to  the 
Circuit  Court  of  Appeals  for  review,  or  may  obtain  leave  of 
court  to  file  a  plea  to  the  declaration.  If  he  takes  the  latter 
course,  he  cannot  set  up  in  that  plea  any  defence  which  was 
set  up  in  the  overruled  demurrer.  And  if  his  other  defences 
fail  on  the  trial,  and  he  afterwards  takes  the  case  to  the 
Circuit  Court  of  Appeals,  he  cannot  get  a  review  of  the  de- 
cision of  the  Circuit  Court  overruling  his  demurrer  to  the 
declaration.  For  this  reason,  it  is  not  wise  to  trust  any 
vital  defence  to  the  carriage  of  a  demurrer,  except  where 
the  defendant  has  no  other  vital  defence,  or  except  where 
he  is  certain  that  his  demurrer  will  not  be  overruled. 

Where  a  demurrer  to  a  plea  is  sustained,  on  a  ground 
which  cannot  be  cured  by  amendment,  the  defendant  may 
file  an  exception,  and  take  the  case  to  the  Circuit  Court  of 
Appeals  for  a  review  of  the  decision  upon  the  demurrer ; 
or  he  may  go  to  trial  upon  any  other  plea  which  he  may 
have  filed,  and  which  has  not  been  demurred  to,  or  has 
repelled  a  demurrer.  If  he  takes  the  latter  course,  and  is 
beaten  on  the  trial,  and  afterwards  takes  the  case  to  the 
Circuit  Court  of  Appeals,  he  ought  in  that  tribunal,  to  get  a 
review  of  the  decision  of  the  Circuit  Court  sustaining  the 
demurrer  to  his  plea  ;  for  he  could  not  prevent  the  filing  of 
that  demurrer,  and  without  such  a  review  can  get  no  appeal 
from  the  decision  of  the  Circuit  Court  sustaining  it.  But 
where  a  demurrer  to  a  plea  is  overruled,  the  plaintiff  must 
stand  by  that  demurrer,  and  take  the  case  to  the  Circuit 
Court  of  Appeals  upon  that  issue  alone,  or  if  he  goes  to 
trial  without  doing  so,  he  will  thereby  waive  his  demurrer  ; 


CHAP.   XVIII.]  ACTIONS   AT   LAW.  381 

and  if  he  is  unsuccessful  on  the  trial,  arid  thereafter  takes 
the  case  to  the  Circuit  Court  of  Appeals,  he  cannot  secure 
in  that  court  a  review  of  the  decision  of  the  court  below, 
overruling  his  demurrer  to  the  plea, 

§  487.  The  trial  of  an  action  at  law  for  infringement  of  a 
patent  may  be  by  a  jury,  or  by  a  judge,  or  by  a  referee. 
The  first  of  these  sorts  of  trial  is  the  only  proper  one, 
except  in  cases  where  both  parties  agree  to  substitute  one 
of  the  others.  Cases  of  the  kind  may  be  tried  by  the  judge, 
where  the  parties  file  with  the  clerk  a  stipulation  in  writing 
waiving  a  jury ;  l  and  trial  by  a  referee  appointed  by  the 
court,  with  the  consent  of  both  parties,  is  a  mode  of  trial 
fully  warranted  by  law.2 

§  488.  Trial  by  jury  must,  in  the  absence  of  contrary  con- 
sent by  the  parties,  be  by  a  jury  of  twelve  men.  Unanimity 
is  necessary  to  a  verdict  of  a  jury  in  a  Federal  court,  even 
in  California  or  Nevada;  though  the  statutes  of  those  States 
provide  that  in  their  courts,  a  legal  verdict  may  be  found 
when  three-fourths  of  the  members  of  a  jury  agree.  The 
laws  of  those  States  on  that  point  are  not  covered  by  Sec- 
tion 721  of  the  Hevised  Statutes,  and  so  made  rules  of  decis- 
ion in  Federal  courts;  because  the  Federal  Constitution 
otherwise  provides.  That  provision  is  found  in  its  seventh 
amendment,  and  in  the  following  language:  "In  suits  at 
common  law,  where  the  value  in  controversy  shall  exceed 
twenty  dollars,  the  right  of  trial  by  jury  shall  be  preserved." 
It  is  true  that  unanimity  was  not  necessary  to  the  verdicts 
of  juries  in  England  till  after  the  reign  of  Edward  the  First,3 
and  that  it  was  never  required  in  Scotland.4  But  the  kind 
of  "trial  by  jury,"  known  in  England  and  in  the  United 
States  when  the  seventh  amendment  was  proposed  by  Con- 
gress,5 and  when  it  was  ratified  by  three-fourths  of  the 

1  Revised  Statutes,  Section  649  4  Barrington    on    the    Statutes, 

2  Heckers  ».  Fowler,  2  Wallace,       Chap.  29,  p.  20;   17  &  18  Victoria, 
123,  1864.  Chap.  59;  22  &  23  Victoria,  Chap.  7; 

2Bracton,  Liber  IV.  Chap.    19;       31  &  32  Victoria,  Chap.  100,  Sec.  48. 
Fleta,  Liber  IV.  Chap.  9;  Britton,          5  September  25.  1789. 
Liber  II.  Chap.  21. 


382  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

States,1  is  doubtless  the  kind  of  trial  guaranteed  by  that 
amendment.  Therefore  no  law  providing  for  any  other 
kind  of  trial  by  jury  can  be  enforced  in  a  United  States 
court. 

§  489.  The  practice  in  actions  at  law  in  the  Federal  courts 
is  not  uniform  throughout  the  United  States.  There  are 
no  general  rules  governing  the  Circuit  Courts  when  sitting 
as  law  courts,  though  there  is  such  a  system  prescribed  for 
them  when  sitting  in  equity.  On  the  law  side,  each  Circuit 
Court  is  governed,  in  matters  of  practice,  by  the  laws  of  the 
State  in  which  it  is  established,  so  far  as  those  laws  are 
applicable;2  and  on  points  where  no  law  exists,  it  is  gov- 
erned by  rules  or  customs  of  its  own  making  or  observance. 
No  Act  of  Congress  is  necessary  to  enable  United  States 
courts  to  make  and  enforce  its  own  rules  of  practice.  It  is 
only  necessary  that  such  rules  be  not  repugnant  to  the  laws 
of  the  United  States.3 

§  490.  The  rules  of  evidence  which  are  used  in  the  trial 
of  patent  causes  are  the  ordinary  rules  of  the  common  law, 
as  modified  by  the  statutes  of  the  particular  States  in  which 
such  trials  occur,4  and  as  adapted  to  the  circumstances  of 
patent  litigation  by  the  decisions  of  the  United  States  courts. 

§  491.  Evidence  to  support  his  declaration  must  of  course 
be  introduced  by  a  plaintiff  in  a  patent  suit  before  the 
defendant  can  be  called  upon  to  prove  any  defence.  Where 
the  complainant  or  the  defendant  is  a  corporation,  and  that 
fact  is  not  admitted  in  the  defendant's  plea,  it  must  be  proved 
by  the  plaintiff;  and  it  may  be  proved  by  a  certified  copy  of 
its  charter  or  articles  of  incorporation.  Aside  from  that 
preliminary  matter,  the  first  item  of  the  plaintiff's  evidence 
consists  of  the  letters  patent  sued  upon,  or  of  a  written  or 
printed  copy  of  the  same,  authenticated  by  the  seal  and 
certified  by  the  Commissioner  or  the  Acting  Commissioner  of 


1  November  3,  1791.  4  Vance    v.  Campbell,   1    Black, 

2  Revised  Statutes,  Section  914.  427.  1861;  Hausknecht  v.  Claypool, 

3  Heckers  v.  Fowler,  2  Wallace,  1  Black,  431,  1861;  Wright  v.  Bales, 
123,  1864.  2  Black,  535,  1862. 


CHAP.   XVIII.]  ACTIONS   AT   LAW.  383 

the  Patent  Office.1  Either  the  letters  patent,  or  such  a  copy 
thereof,  is  prima  facie  evidence  of  the  validity  of  the  letters 
patent,  unless  it  appears  on  its  face  not  to  be  such  a  form 
of  document  as  the  statute  prescribes.5*  But  the  printed 
memorandum,  which  is  usually  made  at  the  head  of  the 
specification  of  a  patent,  and  which  states  the  date  of  the 
filing  of  the  application  for  that  patent,  is  not  even  prima 
facie  evidence  of  that  date.3  That  point,  if  it  is  material  in 
a  particular  case,  must  be  proved  by  a  certified  copy  of  the 
application  itself. 

§  492.  Reissue  letters  patent  are  also  prima  fade  evidence 
of  their  own  validity,  on  all  of  the  three  points  which  are 
involved  in  that  question.  They  are  so  in  respect  of  the 
fifteenth  defence ;  because  the  fact  that  the  Commissioner 
assumed  jurisdiction,  by  treating  the  original  letters  patent 
as  a  proper  subject  for  a  reissue,  is  at  least  prima  facie  evi- 
dence that  he  had  jurisdiction.4  They  are  so  in  respect  of 
the  sixteenth  defence ;  because  the  presumption  is  that  the 
Commissioner  knew  the  law,  and,  knowing  it,  would  not 
grant  a  broadened  reissue  after  a  long  lapse  of  time  from 
the  date  of  the  original.5  They  are  so  in  respect  of  the 
seventeenth  defence ;  because  the  presumption  is  that  the 
Commissioner  would  not  violate  the  law,  by  granting  a  reissue 
for  a  different  invention  from  any  which  the  original  letters 
patent  shows  was  intended  to  have  been  claimed  therein. 

§  494.  It  is  an  undoubted  presumption  of  law  that  letters 
patent,  which  appear  on  their  face  to  be  in  full  force,  are  so 
in  fact.  Such  a  document  is  therefore  prima  facie  evidence 
that  it  neither  has  been  repealed  by  a  decree  of  court,  nor 
has  expired  because  of  the  expiration  of  some  foreign 


1  Revised  Statutes,  Section  892.  58  Fed.  Rep.  376, 1893. 

2  Hunt  Bros.'  Fruit  Packing  Co.  8  International  Terra-cotta  Co.  v. 
v.  Cassidy,  53  Fed.  Rep.  259,  1892;  Maurer,  44  Fed.  Rep.  620, 1890. 
Singer  Mfg.  Co.  v.  Brill,  54  Fed.  4  Brooks  v.  Bicknell,  3  McLean, 
Rep.  383,  1892;  Holloway  v.  Dow,  258,  1843. 

54  Fed.  Rep.  514,  1893;  Harper  &  6  Clark  v.  Wooster,  119  U.  S.  326, 

Reynolds  Co.  •».  Wilgus,  56  Fed.  1886. 
Rep.  588, 1893;  Chase  v.  Fillebrown, 


384  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

patent  for  the  same  invention.  It  follows  that  neither  the 
nineteenth  nor  twentieth  defence  needs  to  be  anticipated  by 
a  plaintiff  when  introducing  his  prim  a  facie  evidence. 

§  495.  After  introducing  the  letters  patent  in  evidence, 
unless  the  plaintiff  is  himself  the  patentee,  his  next  step  is 
to  prove  his  title  to  the  right,  upon  the  infringement  of 
which  the  action  is  based.  Where  the  letters  patent  were 
originally  granted  to  an  assignee  of  the  inventor,  they  are 
primafade  evidence  of  title  in  that  assignee.1  But  where 
the  plaintiff  obtained  his  title  after  the  letters  patent  were 
granted,  he  must  prove  himself  to  have  been  the  assignee  of 
the  patent,  or  at  least  a  grantee  under  it  as  to  the  territory 
wherein  the  alleged  infringement  occurred,  when  that 
infringement  occurred.  He  may  do  either  of  these,  by 
introducing  in  evidence  the  original  assignments  or 
grants  which  constitute  his  chain  of  title,  after  having 
proved  them  according  to  the  rules  of  the  common  law ;  and 
by  proving  that  chain  not  to  have  been  cut  or  curtailed. 
But  a  certified  copy  of  the  patent  office  record  of  such  an' 
assignment  or  grant  is  not  admissible  as  primary  evidence 
of  the  original  document.2  To  prove  an  original  assign- 
ment or  grant,  according  to  the  rules  of  the  common  law, 
where  there  was  a  subscribing  witness,  the  first  step  is  to 
produce  him,  and  take  his  testimony  to  the  genuineness  of 
his  signature ;  or  if  he  cannot  be  produced,  the  first  step 
consists  in  proving,  if  possible,  what  has  become  of  him, 
and  if  that  is  impossible,  in  proving  that  fact.  When  this 
step  has  been  taken,  and  also  where  there  was  no  subscrib- 
ing witness  to  the  document  to  be  proved,  it  can  be  proved 
by  testimony  of  the  genuineness  of  the  signature  of  him 
who  executed  it,  as  assignor  or  grantor,  as  the  case  may 
be.  Where  an  original  assignment  or  grant,  which  is  essen- 
tial to  the  plaintiff's  title,  cannot  be  produced,  its  character 
may  be  proved  according  to  the  rules  of  the  law  of  evidence 
relevant  to  such  cases;  and  that  proof  will  be  practically 

1  Whitcomb   v.  Coal   Co.  47  Fed.       can  Cable  Ry.  Co.  60  Fed.    Rep. 
Rep.  655,  1891.  1016,  1894 ;  Paine  v.  Trask,  56  Fed. 

a  Mayor  of  New  York  «.  Ameri-      Rep.  233,  1893. 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  385 

facilitated  by  the  aid  of  a  certified  copy  of  the  Patent  Ofiice 
record  of  the  document. 

§  496.  It  is  not  necessary  for  any  plaintiff  to  prove  in  his 
prima  facie  evidence  that  the  defendant  has  no  license  or 
release  with  which  to  defend.1  But  it  is  required  of  him  to 
prove  that  he  never  made  nor  sold  any  specimen  of  the  inven- 
tion without  marking  it  "  patented,"  together  with  the  day 
and  year  the  patent  was  granted  ;  or  that  the  defendant  was 
duly  notified  that  his  doings  constituted  an  infringement  of 
the  patent,  and,  after  such  notice,  continued  to  infringe.2 

§  497.  Proof  of  the  making,  selling,  or  using,  by  the 
defendant,  of  a  specimen  or  specimens  of  a  process  or  thing 
which  the  plaintiff  claims  is  covered  by  his  patent,  consti- 
tutes the  next  step  to  be  taken  in  proving  a  prima  fade  case. 
This  point  is  often  covered  by  a  stipulation  of  the  parties. 
Defendants  are  generally  wise  when  they  make  such  stipu- 
lations, because  any  attempts  to  conceal  the  nature  of  their 
doings  are  likely  to  prejudice  the  welfare  of  their  defences. 
But  in  cases  where  the  defendants  have  no  refuge  but  con- 
cealment, the  point  of  proof  may  be  one  of  difficulty,  for 
courts  of  law  have  no  power  to  order  inspections  of  a 
defendant's  works  ; 3  though  -the  defendant  may  be  called 
as  a  witness,  and  compelled  to  describe  what  he  has  done  ;  4 
and  a  discovery  of  the  defendant's  doings  may  be  obtained 
by  a  bill  in  equity  filed  in  aid  of  an  action  at  law.5  Where 
a  defendant  cannot  be  relied  upon  to  testify  fairly  and  fully, 
the  plaintiff  must  secure  other  evidence  ;  for  it  is  necessary 
to  a  verdict  in  an  action  at  law  for  an  infringement  of  a 
patent,  that  both  the  nature  and  extent  of  that  infringement 
be  shown  to  the  jury  by  satisfactory  proof.  Evidence  of  the 
nature  of  a  defendant's  doings  is  the  first  element  of  evi- 
dence of  infringement ;  and  evidence  of  their  extent  is  an 

1  Fisher  «.  Hayes,  6  Fed.  Rep.  79,  1857. 

1881.  *  Roberts  v.  Walley,  14  Fed.  Rep. 

2Dunlap  v.  Schofleld,  152  U.  S.  169,  1882;  Delamater®.  Reinhardt, 

244,  1894 ;  Traver  v.  Brown,  62  Fed.  43  Fed.  Rep.  76,  1890. 

Rep.  933, 1894.  6  Colgate  c.Compagnie  Francalse, 

3  Parker  «.  Bigler,  1  Fisher,  287,  23  Fed.  Rep.  85,  1885. 


386  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

indispensable  part  of  the  necessary  evidence  of  damages.1 

§  498.  Evidence  of  infringement  is  completed  with  evi- 
dence of  the  defendant's  doings,  if  what  he  did  was  obvi- 
ously and  unquestionably  identical  with  what  is  covered  by 
the  patent  in  suit,2  or  if  he  is  estopped  from  denying  iden- 
tity between  those  doings  and  that  patent.3  And  even  where 
differences  are  apparent,  the  complainant,  if  he  chooses  ? 
may  rest  when  he  has  introduced  evidence  or  a  stipulation 
stating  the  character  of  the  acts  done  by  the  defendant.  In 
that  case  the  court  will  interpret  the  words  of  the  patent  in 
the  sense  in  which  they  are  ordinarily  employed,  and,  with 
the  knowledge  of  the  invention  thus  acquired,  will  deter- 
mine whether  the  acts  done  by  the  defendant  amount  to 
infringement.4  But  judges  do  not  always  possess  the  requi- 
site knowledge  of  the  meaning  of  the  terms  of  art  or  science 
used  in  letters  patent,  and  are  not  always  able  to  accurately 
weigh  similarities  and  differences  in  mechanics,  chemistry, 
electricity,  or  other  physics,  without  receiving  special 
information  thereon.  Therefore  it  is  always  proper  and 
generally  necessary  to  introduce  expert  testimony  to  show 
that  the  differences  are  all  immaterial,  and  to  show  that  the 
defendant's  doings  actually  did  constitute  an  infringement 
of  the  plaintiff's  patent.  Experts  in  patent  cases  are  mainly 
experts  in  mechanics,  chemistry,  or  electricity  ;  and  a  man 
who  has  extensive  theoretical  and  practical  knowledge  of 
either  of  those  sciences,  is  a  mechanical,  chemical,  or  elec- 
trical expert,  as  the  case  may  be ;  and  a  man  may  be  an 
expert  in  any  other  science  who  possesses  the  same  quali- 
fications in  it.  The  opinions  of  such  experts  are  admissible 
upon  the  points  of  fact  to  which  they  are  relevant ;  but  in 


1  National  Car  Brake  Shoe  Co.  ».  Mfg.  Co.  v.  Yaryan  Mfg.  Co.  43  Fed. 
Mfg.  Co.  19  Fed.  Rep.  519, 1884.  Rep.  148,  1890. 

2  Jennings  v.  Kibbe,  10  Fed.  Rep.  3  Time  Telegraph  Co.  v.  Himmer, 
669,1882;  Barrett®. Hall,  1  Mason,  19  Fed.  Rep.  322,  1884. 

471,  1818 ;  Hayes  v.  Bickelhoupt.  23  4  American  Linoleum  Co.  v.  Nairn 

Fed.  Rep.  184, 1885;  Freesefl.  Swart-  Linoleum  Co.  44  Fed.    Rep.   756, 

child,  35  Fed.  Rep.  141, 1888 ;  Sugar  1890. 


CHAP.   XVIII. J  ACTIONS  AT   LAW.  387 

order  to  have  much  weight,  they  must  be  accompanied  by 
statements  of  good  reasons  upon  which  they  are  based.1 

In  deciding  between  contradictory  expert  testimony, 
juries  should  consider  the  respective  reasons,  ability,  knowl- 
edge, and  fairness  of  the  experts.2  To  judge  according  to 
their  number  or  their  fame  would  be  unsafe.  The  wealthier 
litigants  are  generally  those  who  employ  the  more  numer- 
ous and  the  more  expensive  expert  witnesses  ;  but  it  is  not 
always  the  wealthier  litigant  who  is  right  in  a  controversy, 
nor  always  the  more  famous  expert  who  is  right  in  his  opin- 
ion. The  carefully  digested  views  of  a  young  and  studious 
scientist,  may  often  be  more  nearly  true  than  the  more  hastily 
formed  opinion  of  a  more  experienced  man. 

§  499.  No  expert  can  know  whether  a  particular  thing, 
done  or  made  by  a  defendant,  is  the  same  as  any  thing  cov- 
ered by  a  particular  patent,  until  he  ascertains  what  that 
patent  covers.  But  the  latter  question  is  one  of  construc- 
tion for  the  court,  and  not  a  question  of  evidence,  to  be 
sworn  to  by  an  expert,  and  decided  by  the  jury.  In  the 
regular  course  of  proceedings  in  trials  at  law,  as  well  as  in 
hearings  in  equity,  the  construction  of  the  patent  is  not 
announced  by  the  judge  till  after  the  evidence  is  taken. 
This  practice  makes  it  proper  to  put  hypothetical  questions 
to  expert  witnesses.  The  hypothesis  in  such  a  question 
is  one  which  embodies  that  construction  of  the  patent  upon 
which  the  examining  counsel  thinks  it  both  safe  and  suffi- 
cient to  rely.  If,  when  charging  the  jury,  the  judge  gives  a 


1  United  States  Annunciator  Co.  yer,  512,  1871 ;  Spaulding®.  Tucker, 
«.  Sanderson,  3  Blatch.  184,  1854 ;  Deady,  649,  1869 ;  Gaboon  v.  Ring, 
Livingston  v.  Jones,  1  Fisher,  521,  1  Cliff.  592,  1861 ;  Cox  v.  Griggs,  1 
1859;  Conover  v.  Rapp,  4  Fisher,  Bissell,  362, 1861;  Conover  0.  Roach, 
57.  1859;  Norton  ».  Jensen,  49  Fed.  4  Fisher,  12.  1857 ;  Whipple  v.  Mfg. 
Rep.  864,  1892 ;  Briggs  v.  Central  Co.  4  Fisher,  29,  1858 ;  Conover  v. 
Ice  Co.  54  Fed  Rep.  379.  1892.  Rapp,  4  Fisher,  57,  1859  ;  Water- 

2  Johnson  v.  Root,  1  Fisher,  351,  bury  Brass  Co  v.  New  York  Brass 
1858 ;  Many  v    Sizer,  1  Fisher,  17,  Co.  3  Fisher,  43,  1858 ;  Bierce  v. 
1849 ;  Hudson  v.  Draper,  4  Fisher,  Stocking.    11    Gray  (Mass.),    174, 
256,  1870  ;  Page  v.  Ferry,  1  Fisher,  1858. 

298,  1857 ;  Carter  v.  Baker,  1  Saw- 


388  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

different  construction  from  that  embodied  in  the  hypotheti- 
cal question,  then  the  answer  to  that  question  will  be  seen 
to  be  immaterial,  and  the  jury  will  do  right  to  disregard  it. 
Examining  counsel  ought  therefore  to  be  very  certain  that 
his  hypothetical  construction  is  the  true  one  ;  or  otherwise, 
to  put  as  many  hypothetical  questions  as  there  are  probable 
favorable  constructions.  Doing  the  latter  he  may  have  a 
favorable  answer  upon  which  to  argue  to  the  jury,  if  he 
secures  from  the  judge  a  construction  which  corresponds 
with  either  of  his  hypothetical  questions.  A  statement  of 
a  witness  that  a  particular  thing  does  or  does  not  infringe 
a  particular  patent,  is  inadmissible  in  evidence,  because 
that  statement  includes  a  construction  of  the  patent,  and 
construction  of  patents  is  the  duty  of  courts,  and  not  of 
experts.1 

§  500.  Though  not  permitted  to  testify  to  the  construction 
of  a  patent,2  experts  are  sometimes  called  upon  to  testify  to 
facts  which  positively  control  that  construction.3  Where 
the  state  of  the  art  is  the  subject  of  inconsistent  evidence, 
and  where  the  construction  of  the  patent  depends  on  what 
is  the  fact  in  that  regard,  the  judge  will  not  charge  the  jury 
that  the  patent  means  thus  and  so,  but  will  tell  them  that  if 
they  find  the  state  of  the  art  to  be  so  and  so,  then  the  patent 
is  entitled  to  such  and  such  a  construction.4  In  cases  of 
this  kind  it  may  occur  that  the  jury,  in  deciding  upon  the 
sbate  of  the  art,  must  receive  information  from  experts  rele- 
vant to  the  mechanical  nature  of  prior  things,5  as  well  as 
information  from  other  sources  relevant  to  the  prior  exist- 
ence of  those  things.  All  questions  of  identity  of  things 
are  questions  for  the  jury  in  an  action  at  law,6  and  are 
therefore  proper  to  be  testified  about  by  experts.  Where 


1  Marsh  v.  Stove  Co.  51  Fed.  Rep.  *  Burdell  v.  Denig,  92  U.  S.  722, 

203,  1892;  Holmes  v.  Truman,  67  1875. 

Fed.  Rep  545,  1895.  °  McKay  &  Copeland  Mach.  Co. 

a  Waterbury  Brass    Co.  v    New  ®.  Claflin,  58  Fed.  Rep.  354,  1893. 

York  Brass  Co  3  Fisher,  54,  1858.  «  Tyler  v.  Boston,  ?  Wallace.  327, 

3  Marsh  v.  Stove  Co.  51  Fed.  Rep.  1868. 
203,  1892.  " 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  389 

a  patent  covers  such  of  the  things  described,  as  perform  a 
particular  function,  it  is  the  business  of  the  jury  to  decide, 
and  therefore  proper  for  an  expert  to  testify,  which  those 
things  are.1 

§  501.  The  cross-examination  of  experts,  cannot  extend 
to  inquiries  into  the  characteristics  of  things  not  relevant 
to  the  case,  put  to  them  for  the  purpose  of  testing  their 
knowledge  or  their  fairness  ;  because  if  the  answers  appeared 
to  be  undeniably  correct,  they  would  be  wholly  immaterial, 
and  if  thought  to  be  erroneous  they  could  be  shown  to  be 
so,  only  by  the  testimony  of  others,  who  might  themselves 
be  the  mistaken  ones.  To  allow  such  a  question,  would 
thus  operate  to  introduce  an  immaterial  issue  of  fact  into  a 
case,  and  to  draw  the  attention  of  the  jury  away  from  the 
issues  of  the  pleadings.2 

§  502.  The  last  part  of  a  plaintiff's" prima  facie  evidence, 
consists  in  proof  of  the  amount  of  his  damages,  sometimes 
supplemented  by  evidence  tending  to  show  that  a  judgment 
ought  to  be  entered  for  an  amount  greater  than  the  actual 
damages  sustained  by  him.3  The  matter  is  mentioned  in 
this  connection  for  the  sake  of  symmetry ;  but  it  is  so  large 
that  it  constitutes  the  subject  of  a  separate  chapter  of  this 
book.  To  that  chapter,  recourse  may  be  had  for  detailed 
information  upon  the  subject. 

§  503.  The  next  part  of  a  trial  is  the  introduction  of  evi- 
dence by  the  defendant  to  sustain  his  defences.  The  pos- 
sible defences  in  patent  cases  are  twenty-seven  in  number. 
In  prior  sections  in  this  chapter,  they  are  consecutively 
numbered  for  purposes  of  easy  reference,  and  are  treated 
in  respect  of  the  pleadings  which  they  respectively  require, 
and  the  results  which  they  respectively  produce  in  patent 
actions  at  law.  It  is  now  convenient  to  set  forth,  in  the 
same  order,  some  of  the  leading  points  of  the  law  of 
evidence  applicable  to  each. 


1  Silsby  v.  Foote,  14  Howard,  218.      51, 1814. 

1852.  8  Revised  Statutes,  Section  4919. 

2  Odiorne  v.  Winkley,  2  Gallison, 


390  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

§  504.  The  first  defence  will  sometimes  require  evidence 
to  show  that  the  terms  of  art  or  science  which  are  used  in 
the  patent,  have  such  a  meaning  that  the  court  is  bound  to 
construe  the  patent  to  be  one  for  a  principle,  or  for  some- 
thing other  than  a  patentable  process,  or  a  machine,  manu- 
facture, composition  of  matter,  or  design.  But  where  a 
patent  plainly  claims  only  the  peculiar  function  of  a 
described  machine,  the  first  defence  can  be  maintained 
without  any  evidence  outside  of  the  patent ;  and  the  first 
defence  may  be  made  without  any  evidence  outside  of  the 
patent,  where  the  patent  claims  only  a  mechanical  transac- 
tion, which  may  be  performed  by  hand,  or  by  any  of  several 
different  mechanisms  or  machines.1 

§  505.  The  second  defence  may  sometimes  be  supported 
by  facts  of  which  the  court  will  take  judicial  notice.8  But 
evidence  to  show  the  state  of  the  art,  is  often  required  to 
show  want  of  invention.  A  patent  granted  for  an  implement 
of  agriculture,  consisting  of  a  hoe-handle  with  a  hoe  on  one 
end  and  a  rake  on  the  other,  would  be  void  for  want  of 
invention,  even  if  both  new  and  useful.3  The  court  would 
take  judicial  notice  of  the  prior  existence  of  handles  hav- 
ing hoes  attached  thereto,  and  of  other  like  handles  having 
rakes  fastened  to  one  end  ;  and  on  the  basis  of  that  judicial 
notice,  would  pronounce  such  a  patent  to  be  wholly  invalid. 
A  patent  for  a  particular  alleged  combination  in  a  rare  and 
complicated  machine,  may  also  be  open  to  precisely  the 
same  sort  of  objection ;  while  the  facts  upon  which  it  rests 
in  the  particular  case,  may  be  wholly  unknown  to  people 
generally,  and  wholly  unknown  to  judges  who  hear  patent 
causes ;  though  well  understood  by  certain  classes  of 
mechanics.  In  the  latter  case,  it  is  necessary  to  introduce 
evidence  of  those  facts  in  order  to  show  want  of  invention. 
Such  evidence  may  consist  of  proof  of  the  prior  existence 
of  the  parts  of  the  alleged  combination,  and  proof  of  the 

1  Section  3a  of  this  book.  Ill  U.  8.  606,  1883. 

2  Brown  v.  Piper,  91   U.   S.  37,          3  Reckendorfer  v.  Faber,  92  U.  S. 
1875;  Slawson  D.  Railroad  Co.  107      347,  1875. 

U.  S.  649,  1882;  Phillips  v.  Detroit, 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  391 

fact  that  their  union  in  the  machine  constitutes  not  a  real 
combination,  but  an  aggregation  only. 

And  the  prior  art  must  generally  be  proved  in  order  to  sup- 
port the  second  defence  ;  and  that  proof  will  generally  con- 
sist of  one  or  more  prior  patents  or  printed  publications. 
The  method  of  introducing  them  in  evidence,  is  explained 
in  the  next  two  sections  where  substantial  identity  between 
the  invention  of  the  patent  in  suit  and  the  invention  disclosed 
in  a  prior  patent  or  printed  publication,  is  presupposed.  But 
where  a  prior  patent  or  printed  publication  is  set  up  to 
negative  invention,  rather  than  to  negative  novelty,  identity 
may  be  absent.  In  such  a  case,  the  question  is  whether 
the  difference  or  differences  between  the  subject  claimed  in 
the  patent  in  suit  and  the  prior  art,  amount  to  invention  ; 
and  it  is  generally  necessary  for  a  defendant  to  introduce 
expert  testimony  on  that  point.1 

§  506.  The  third  defence,  and  the  facts  which  support  it, 
are  explained  at  large  in  the  third  chapter  of  this  book.  In 
this  connection,  it  is  only  necessary  to  explain  the  kinds  of 
evidence  by  which  those  facts  may  be  proved,  and  to  state 
the  special  rules  which  govern  the  weight  of  such  evidence. 

Where  novelty  is  duly  sought  to  be  negatived  by  prior 
United  States  patents,  duly  certified  copies  of  those  patents 
are  admissible  ; 2  and  it  is  a  general  practice  among  patent 
lawyers  to  waive  the  certificate,  where  a  printed  copy  from 
the  Patent  Office  is  presented  by  opposing  counsel.  The 
certified  copies  of  letters  patent,  which  are  admissible  in 
evidence,  include  not  only  such  individual  copies  as  are 
furnished  to  private  persons  on  payment  of  the  proper  fees ; 
but  also  the  certified  bound  volumes  of  copies  which  are 
gratuitously  distributed  by  the  Commissioner  of  Patents  to 
all  the  State  and  Territorial  capitols,  and  to  all  the  United 
States  District  Court  clerk's  offices,  except  those  which 
are  located  at  the  capitals  of  the  States  and  Territories.3 


1  Waterman  v.  Shipman,  55  Fed.          «  Revised  Statutes,  Section  892. 
Rep.  987,  1893.  8  Revised  Statutes,  Section  490. 


392  ACTIONS   AT   LAW.  [CHAP.    XVIII 

Where  prior  foreign  patents  are  duly  pleaded  to  negative 
novelty,  they  may  be  proved  prima  facie,  by  duly  certified 
copies  of  those  copies  thereof,  which  are  kept  in  the  United 
States  Patent  Office.1  If  plenary  proof  of  foreign  letters 
patent  is  required,  it  can  be  made  by  producing  a  copy 
thereof,  duly  certified  by  that  officer  of  the  foreign  govern- 
ment which  issued  the  patent,  who  corresponds  to  the  Com- 
missioner of  Patents  in  the  United  States.2  Where  an  error 
creeps  into  a  certified  copy  of  any  letters  patent,  it  may 
be  corrected  by  another  and  more  carefully  compared  cer- 
tified copy  from  the  same  office.3  Letters  patent,  to  be 
admissible,  must  agree  in  name  and  date  with  the  statements 
in  the  pleadings,  in  proof  of  which  they  are  offered.4 

§  507.  Prior  printed  publications  must  be  proved  by  the 
introduction  of  a  specimen  of  the  printed  thing,  which  is 
relied  upon,  and  by  satisfactory  evidence  that  it  was  pub- 
lished before  the  date  of  the  patent  in  suit.  Parol  testi- 
mony of  the  contents  of  such  printed  matter  is  generally 
inadmissible.5  The  testimony  of  a  person,  that  the  printed 
thing  produced  was  published  before  the  date  of  the  inven- 
tion in  suit,  if  believed  by  the  jury,  would  be  sufficient 
evidence  on  that  point.  What  evidence  short  of  that  in 
convincing  force,  would  answer  the  purpose  in  hand,  has 
not  been  judicially  settled.  Printed  publications  are  not 
generally  evidence  of  the  truth  of  the  statements  which 
they  contain.6  But  where  a  book  or  public  periodical 
appears  to  have  been  published  in  a  specified  year,  or  on  a 
specified  day,  and  where  it  contains  matter  which  furnishes 
collateral  evidence  of  the  genuineness  of  the  date,  and 
where  it  is  free  from  the  suspicion  of  having  been  changed 
after  it  was  put  forth,  it  will  be  received  in  evidence,  with- 
out direct  testimony  that  it  was  published  when  it  purports 


1  Revised   Statutes,  Section  893.  4  Bellas  v.    Flays,  5  Sergeant  & 

2  Schoerken  v.  Swift  &  Courtney  Rawle  (Penn.)  427,  1819. 

&    Beecher   Co.  7    Fed.    Rep.  469,  6  McMahon  v.    Tyng,   14  Allen 

1881.  (Mass.),  167,  1867. 

3  Brooks  v.  Jenkins,  3  McLean,  6  Seymour     ».     McCormick,     19 
432,  1844.  Howard,  106,  1856. 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  393 

to  have  been.1  But  a  certificate  of  the  Commissioner  of 
Patents,  that  a  particular  book  was  in  the  library  of  the 
Patent  Office  as  early  as  a  particular  date,  is  not  evidence 
of  that  fact.3 

§  508.  Prior  knowledge  or  use  of  a  thing  patented,  may 
be  proved  by  the  testimony  of  the  person  or  persons  who 
had  such  prior  knowledge,  or  who  know  of  such  prior  use. 
Such  testimony  includes  three  points :  the  existence,  the 
character,  and  the  date  of  the  thing  previously  known  or 
used.  Where  a  witness  relies  wholly  on  his  memory  for  all 
three  of  these  points,  his  testimony,  though  admissible, 
is  not  strong.  It  is  generally  impossible  to  remember  with 
certainty  the  particular  construction  of  a  thing  of  which  no 
specimen  is  known  to  remain  in  existence  ;  and  most  mem- 
ories are  nearly  unreliable  on  bare  questions  of  dates.  It 
is  therefore  desirable  to  fortify  testimony  of  prior  knowl- 
egde  or  use  by  producing  the  anticipating  thing,  or  a  speci- 
men thereof,  and  by  connecting  the  history  of  that  thing 
with  events  about  which  there  is  no  room  for  doubt.  Where 
the  anticipating  thing  cannot  be  produced,  the  testimony 
which  supports  its  prior  existence,  may  still  prevail,  if  the 
construction  of  the  article  was  so  simple,  and  so  well  under- 
stood, as  to  be  unlikely  to  be  forgotten,  and  especially  if  a 
number  of  credible  witnesses  agree  in  regard  to  its  char- 
acter and  its  date. 

§  509.  Parol  evidence  of  an  anticipating  thing,  is  likely 
to  be  met  by  other  parol  evidence,  tending  to  show  that 
such  a  thing  never  existed  at  the  place  alleged ;  or  that  it 
was  substantially  different  from  the  patented  invention 
sought  to  be  anticipated ;  or  that  it  did  not  exist  at  the 
alleged  place  till  after  the  date  of  the  patented  invention. 
Testimony  of  the  first  sort  is  negative  in  its  character,  and 
therefore  not  so  weighty  as  the  affirmative  evidence  which 
it  contradicts.3  But  it  does  not  need  to  be  so  weighty,  in 


1  Britton  v.   White  Mfg.   Co.  6t      Rep.  773,  1894. 

Fed.  Rep.  95,    1894.  s  Union  Sugar  Refinery  v.  Mat- 

2  Travers  v.  Cordage  Co.  64  Fed.      thiessen,  2  Fisher,  600,  1865. 


394  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

order  to  overthrow  the  latter,  for  a  mere  preponderance  of 
evidence  will  not  sustain  the  defence  of  want  of  novelty. 
That  defence,  in  order  to  prevail  must  be  proved  beyond  a 
reasonable  doubt.1  Testimony  of  an  anticipating  thing 
may  also  be  met  by  evidence  that  the  witness  purchased  a 
license  under  the  patent;  but  such  answering  evidence  is 
generally  entitled  to  very  little  weight,*  because  the  wit- 
ness may  not  have  understood  that  the  facts  of  which  he 
knew,  constituted  a  legal  defence  to  the  patent,  or  he  may 
have  preferred  to  pay  for  a  license,  rather  than  to  undergo 
the  annoyance  and  incur  the  expense  which  is  generally 
incident  to  actions  for  infringement. 

§  510.  When  anticipating  matter  is  undeniably  proved  to 
have  existed  before  the  date  of  the  patent  in  suit,  want  of 
novelty  is  prima  facie  proved  ;3  because  the  printed  memo- 
randum of  the  date  of  the  application  for  the  patent,  which 
is  put  at  the  head  of  the  specification,  is  not  evidence  of 
that  date.4  But  the  plaintiff  may  meet  the  defendant's  evi- 
dence of  anticipating  matter  by  proof  that  he,  or  his 
assignor,  made  the  invention  at  a  still  earlier  date.  He 
may  sometimes  do  this  by  means  of  a  certified  copy  of  the 
specification  and  drawings  of  his  original  application ; 
and  he  may  sometimes  do  so  prima  facie,  by  means 
of  a  like  copy  of  the  original  petition  upon  which  the 
letters  patent  were  granted ;  but  not  by  parol  evidence 
relevant  to  the  time  when  the  petition,  specification  or 
drawing  was  filed.5  If  his  application  was  not  early  enough 
for  the  purpose,  the  plaintiff  may  prove  the  real  date  of  his 
invention  by  proving  the  date  of  either  of  those  facts,  which, 
in  the  chapter  on  novelty,  were  shown  to  constitute  the 
birth  of  an  invention  thereafter  patented.6  If  that  fact 


1  Section  76  of  this  book.  4  International  Terra-Cotta  Co.  v. 

2  Evans  v.  Eaton,  3  Wheaton,  454,  Maurer,  44  Fed.   Rep.  619,  1890. 
1818.  5  Wayne  v.  Winter,   6    McLean, 

3  Havemeyer    v.    Rampbell,    21  344,  1855. 

Fed.  Rep.  404, 1884.  «  Section  70  of  this  book. 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  395 

was  a  tangible  thing,  its  establishment  requires  the 
production  and  proof  of  that  thing,  or  requires  proof  of  its 
loss  or  destruction,  and  the  best  obtainable  evidence  of 
what  its  character  was.1 

After  the  plaintiff  has  introduced  evidence  that  he,  or  his 
assignor,  made  the  invention  at  a  still  earlier  date  than  that 
proved  for  the  anticipating  matter ;  the  defendant  cannot 
introduce  evidence  to  carry  the  date  of  the  anticipating 
matter  back  of  the  new  date  thus  proved  by  the  plaintiff ; 
but  the  defendant  may  introduce  evidence  to  disprove,  if 
he  can,  the  plaintiff's  new  date  of  invention.2 

§  511.  The  fourth  defence  requires  evidence  that  the 
patented  invention  will  not  perform  any  function  which  is 
ascribed  to  it  in  the  letters  patent,3  or  proof  that  its  func- 
tion is  not  a  useful  one,  within  the  meaning  of  the  law  on 
that  subject.4 

The  first  of  these  sorts  of  proof  may  consist  of  testimony 
of  a  person  who  is  skilful  in  the  art  to  which  the  invention 
pertains,  and  who  has  endeavored,  in  good  faith,  to  make 
the  patented  thing  work,  and  has  been  unable  to  do  so.  In 
plain  cases,  it  may  also  consist  of  the  testimony  of  such  a 
person,  who  has  not  actually  experimented  with  a  specimen 
of  the  patented  thing,  but  who  is  able  to  demonstrate  theo- 
retically that  it  is  impossible  for  such  a  specimen  to  operate. 
And  in  all  cases  the  evidence  must  show  a  total  incapacity 
in  the  invention  to  do  anything  claimed  for  it,  because 
neither  imperfect  operation,  nor  a  total  failure  to  perform 
part  of  the  claimed  functions,  will  sustain  a  defence  of  want 
of  utility.5  And  either  practical  or  theoretical  evidence  of 
want  of  utility  in  the  sense  now  under  consideration  may 
be  overthrown  by  the  testimony  of  a  person  who  has 


1  Richardson   v.    Hicks,    1    Mo-  sin,  462,  1864. 

Arthur's  Patent  Cases,  336,  1854.  4  Sections  82  to  84  of  this  book. 

2  St.   Paul  Plow  Works  v.  Star-  5  Seymour  v.   Marsh,   6    Fisher, 
ling,  140  U.  S.  198,  1891.  115,  1872. 

8  Rowe  v.  Blanchard,  18  Wiscon- 


396  ACTIONS   AT   LAW.  [CHAP.  XVII. 

succeeded  in  causing  the  patented  process  or  thing  to  pro- 
duce a  result  ascribed  to  it  in  the  patent.. 

The  second  of  these  sorts  of  proof  may  consist  of  evidence 
that  the  function  of  the  patented  thing  is  one  which  people 
generally  profess  to  condemn  as  dangerous  or  immoral. 
Conventional  and  not  absolute  ethics  is  the  criterion  of 
judgment  on  this  point. 

§  512.  The  fifth  defence  may  be  supported  by  any  com- 
petent evidence  which  shows  that  the  inventor  relinquished 
all  expectation  to  secure  a  patent,  and  formed  an  expecta- 
tion that  the  invention  would  always  be  free  to  the  public.1 
Such  evidence  may  be  either  direct  or  circumstantial,  but  a 
mere  preponderance  of  evidence  cannot  sustain  this  defence 
of  actual  abandonment,  because  it  is  one  of  those  which,  in 
order  to  prevail,  must  be  proved  beyond  a  reasonable 
doubt.2 

§  513.  The  sixth  defence  requires  proof  that  the  patented 
thing  was  in  public  use  or  on  sale  in  this  country,  at  a  date 
more  than  two  years  prior  to  that  upon  which  the  applica- 
tion was  made  for  the  patent.3  And  this  defence  is  explained 
in  detail  elsewhere  in  this  book.4 

§  514.  The  seventh  defence  requires  the  introduction  of 
the  original  application  papers,  or  certified  copies  thereof; 
and  in  all  except  very  plain  cases  it  requires  the  testimony 
of  experts  to  explain  the  outward  embodiment  of  the  terms 
contained  in  the  original  letters  patent,  and  in  the  original 
application  respectively.5 

§  515.  The  eighth  defence  calls  for  evidence  that  another 
than  the  patentee  conceived  the  invention  before  he  did; 
and  that  the  other  used  reasonable  diligence  in  adapting 
and  perfecting  the  same ;  and  that  the  patentee  knew  of 
that  prior  conception,  and  obtained  the  patent  surrepti- 
tiously ;  or,  if  he  did  not  know  of  the  prior  conception,  that 

1  Babcock  v.  Degener,   1   McAr-  267;  124  U.  S.  694,  1887. 

thur's  Patent  Cases,  616,  1859.  4  Sections  93-99. 

2McCormickfl.Seymour,2Blatch  5  Bischoff  v.  Wethered,  9  Wal- 

256,  1851.  lace,  812,  1869. 

3  Andrews  v.  Hovey,   123   U.  S. 


CHAP.   XVIII.]  ACTIONS   AT   LAW.  397 

he  obtained  the  patent  unjustly,  by  obtaining  it  without 
notice  to  the  prior  conceiver,  though  the  latter  had  a  caveat 
on  file  in  the  Patent  Office  at  the  time.1 

§  516.  The  ninth  defence  requires  proof  that  another  than 
the  patentee  was  joint  inventor  with  him  of  the  thing  cov- 
ered by  the  patent.  Testimony  on  this  point  must  be  strong 
in  order  to  prevail,  because  the  tendency  of  courts  and 
juries  is  to  assign  such  evidence  to  the  category  of  mechan- 
ical assistance  in  construction,  or  to  that  of  suggested  sub- 
stitution of  equivalents.2 

§  517.  The  tenth  defence  is  more  likely  to  be  successful 
in  the  proof  than  the  ninth ;  because  it  may  not  only  be 
based  on  the  counterpart  of  the  circumstances  which  under- 
lie the  latter,  but  also  on  other  circumstances,  where  those 
do  not  exist.  It  has  sometimes  happened  that  an  inventor, 
having  sold  an  undivided  half  interest  in  his  invention,  has 
joined  with  his  vendee  in  applying  as  joint  inventor  for  a 
patent  therefor.  Such  errors  have  been  known  to  result 
from  ignorance  of  the  law ;  and  such  an  error  has  been  said 
to  have  occurred  in  one  case  on  account  of  a  desire  to  give 
an  important  patent  the  benefit  of  the  name  of  a  more 
distinguished  scientist  than  he  who  was  the  real  producer 
of  the  subject  of  the  claim.  But  in  any  case,  it  is  certain 
that  very  clear  and  unequivocal  evidence  is  necessary  to 
support  this  defence.3 

§  518.  The  eleventh  defence  calls  for  proof  that  the 
letters  patent  contains  less  than  the  whole  truth  relevant  to 
the  invention,  or  that  it  contains  more  than  is  necessary  to 
produce  the  desired  result,  and  that  the  fault  arose  from 
intention  to  deceive  the  public.  But  positive  and  direct 
evidence  is  not  required  on  the  latter  point.  It  is  suflfi- 

1  Revised    Statutes,    Sec.    4920;  3  Gottfried  v.  Brewing  Co.  5  Bann. 
Agawam  Co.  v.  Jordan,  7  Wallace,  &   Ard.  4,    1879;    Butler    v.   Bain- 
587.1868;  Phelpsfl.  Brown,  4  Blatch.  bridge,    29    Fed.   Rep.    142,    1886; 
362,  1859.  Consolidated    Apparatus     Co.     v. 

2  Agawam  Co.  v.  Jordan,  7  Wai-  Woerle,   29    Fed.   Rep.  449.   1887; 
lace.   587,   1868;    Pitts   v.   Hall,   2  Schlicht  &  Field  Co.  v.  Sewing  Ma- 
Blatch.  229, 1851;  Locke  «.  Lane  Co,  chine  Co.  36  Fed.  Rep.  585,  1888. 
35  Fed.  Rep.  293,  1888. 


398  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

ciently  shown  by  proof  of  any  circumstances  which  satisfy 
the  jury  that  such  intention  existed.1 

§  519.  The  twelfth  defence  can  be  supported  by  no  evi- 
dence except  that  of  persons  skilled  in  the  art  to  which  the 
invention  pertains,  or  with  which  it  is  most  nearly  connected. 
A  patent  for  a  chemical  composition  or  process  cannot  be 
overthrown,  on  the  ground  of  an  insufficient  description,  by 
the  testimony  of  a  mechanical  expert ;  nor  can  a  patent  for 
an  improvement  of  a  loom  be  overthrown  on  that  ground, 
by  the  testimony  of  a  machinist  skilled  only  in  printing- 
presses.  If  a  description  is  sufficiently  full,  clear,  concise, 
and  exact  to  be  effectually  understood  by  any  person  skilled 
in  that  kind  of  machinery,  or  other  subject  of  a  patent,  it  is 
sufficiently  so  to  meet  this  defence.2 

§  520.  The  thirteenth  defence  may  sometimes  succeed 
without  any  evidence  outside  of  the  letters  patent  them- 
selves. It  will,  however,  always  be  prudent  to  fortify  the 
defence  by  the  testimony  of  an  expert  who  can  show  that 
the  outward  embodiment  of  the  terms  of  the  claim,  is  uncer- 
tain in  character  or  in  extent. 

§  521.  The  fourteenth  defence  requires  several  items  of 
evidence  for  its  support.  It  requires  proof  that  one  or  more 
of  the  claims  of  the  patent  are  void  for  want  of  embodying 
a  subject-matter  of  a  patent,3  or  for  want  of  invention,  or 
for  want  of  novelty  ;4  and  that  the  patentee  has  long  known 
the  facts  which  make  it  invalid  in  that  behalf.  No  dis- 
claimer is  ever  necessary,  in  the  absence  of  all  of  the  first 
three  of  these  circumstances ;  and  no  delay  to  file  one  is 
unreasonable  in  the  absence  of  the  fourth.  Indeed,  proof 
of  a  necessity  for  a  disclaimer,  and  of  long-existing  knowl- 
edge of  the  facts  out  of  which  that  necessity  arose,  will  not 
always  sustain  this  defence ;  because  delay  to  file  a  dis- 
claimer is  not  unreasonable,  so  long  as  there  is  any  reason- 


1  Gray  v.  James,  1  Peters'  Cir-  580,  1881. 

cuit  Court  Reports,  394, 1817;  Dy-  3  O'Reilly  v.  Morse,  15  Howard, 

son  v.  Danforth,  4  Fisher,  133, 1865.  121,  1853. 

2  Loom  Co.  v.  Higgins,  105  U.  8.  4  Revised  Statutes,  Section  4922. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  399 

able  doubt  whether  the  known  facts  constitute  a  necessity 
for  such  a  document1. 

§  522.  The  fifteenth  defence  can  seldom  be  supported  by 
evidence  that  the  original  patent  was  neither  inoperative 
nor  invalid  by  reason  of  a  defective  or  insufficient  specifi- 
cation; because  inoperativeness,  from  one  of  these  causes, 
exists  whenever  the  patent  does  not  secure  and  cover  all  the 
inventions  which  it  indicated,  suggested,  or  described,  and 
which  might  lawfully  have  been  claimed  in  it ; 2  and  because, 
when  not  granted  on  account  of  such  inoperativeness, 
reissues  are  generally  granted  on  account  of  invalidity  which 
arose  by  reason  of  a  defective  or  insufficient  specification, 
or  by  reason  of  a  too  extensive  claim.3  This  defence  there- 
fore generally  requires  to  be  sustained  by  evidence  showing 
that ;  whatever  inoperativeness  or  invalidity  on  account  of 
defective  or  insufficient  specification,  or  on  account  of  too 
extensive  claims,  is  to  be  found  in  the  original  patent ;  the 
error  arose  otherwise  than  by  inadvertence,  accident,  or 
mistake.  The  absence  of  all  three  of  these  mishaps  from 
the  history  of  the  preparation  of  any  original  specification, 
may  be  proved  by  evidence  which  shows  that  the  statements 
or  claims  alleged  to  have  been  omitted  in  one  or  another  of 
these  ways,  were  in  fact  omitted  with  deliberation  or  with 
care,  or  were  omitted  because  they  had  to  be,  in  order  to 
secure  the  original  patent,4  or  were  disclaimed  in  order  to 
secure  an  extension  thereof.5  Evidence  to  show  either  of 
the  last  two  of  these  circumstances,  if  it  exists  at  all,  may 
generally  be  found  among  the  correspondence  on  file  in  the 
Patent  Office,  and  may  be  introduced  in  the  form  of  certi- 
fied copies  of  the  letters  which  contain  it.6 

§  523.  The  sixteenth  defence  can  be  supported  by  the 


1  Silsby  v.  Foote,  20  Howard,  290,  356, 1881 ;  Yale  Lock  Co.  v.  Berk- 

1857;  Matthews®.  Flower,  25  Fed.  shire  Bank,  135  U.  S.  379,  1890: 

Uep.  834,  1885.  Dobson  v.  Lees,  137  U.  8.  265,  1890. 

a  Wilson  v.  Coon,  18  Blatch.  532,  6  Leggetto.  Avery,  101  U.  8.  256, 

1880.  1879. 

3  Revised  Statutes,  Section  4916.  tf  Revised  Statutes,  Section  892. 

4  James  v.  Campbell,  104  U.  8. 


400  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

introduction  of  the  original  patent,  if  when  it  is  compared 
with  the  reissue,  the  latter  appears  to  claim  something  which 
the  original  did  not,  and  appears  to  have  been  applied  for 
a  long  time  after  the  original  was  granted.  How  long  this 
space  of  time  must  be,  in  order  to  sustain  this  defence, 
depends  largely  upon  the  particular  circumstances  of  par- 
ticular cases.  Different  spaces  of  time  which  have  been 
held  to  be  sufficient  for  the  purpose,  are  collated  in  the 
chapter  on  reissues,1  and  the  burden  is  on  the  plaintiff  to 
excuse  delay  for  more  than  two  years.2 

§  524.  The  seventeenth  defence  always  repuires  to  be 
supported  by  the  introduction  of  the  original  patent  ;3  and 
generally  requires  expert  testimony  showing  that  the  out- 
ward embodiment  of  something  claimed  in  the  reissue,  is 
substantially  different  from  anything  described  in  the  orig- 
inal patent  and  apparently  intended  to  be  claimed  therein. 
The  judge  will  not  reject  such  expert  testimony,  unless  the 
case  is  so  clear  that  he  would  have  decided  the  question 
on  a  demurrer,  if  it  had  been  presented  to  him  by  that 
pleading. 

§  525.  The  eighteenth  defence  requires  the  introduction 
in  evidence  of  the  prior  patent,  granted  on  the  application 
of  the  same  inventor  ;  but  it  will  seldom  require  expert  tes- 
timony, because,  in  order  to  prevail  at  all,  this  defence 
requires  the  claim  of  the  prior  patent  to  be  so  clearly  co-ex- 
tensive with  the  claim  of  the  patent  in  suit,  that  its  co-ex- 
tensiveness  is  apparent  upon  the  faces  of  the  two  patents. 
But  expert  testimony  may  be  necessary  to  show  such  sub- 
stantial identity  of  claims,  where  one  or  both  of  the  claims 
may  be  formulated  in  phraseology,  which  cannot  be  under- 
stood without  expert  explanation. 

§  526.  The  nineteenth  defence  would  require  to  be  sup- 
ported by  the  introduction  of  an  officially  attested  copy  of 
the  record  of  the  court  repealing  the  patent,4  or  if  that  record 

1  Section  227  of  this  book.  3  Seymour®.  Osbome, HWallace, 

2  Wollensak  «    Reiher,  115  U.  S.      516,  1870. 

101, 1884 ;  Hoskin  v.  Fisher,  125  U.          4  Revised  Statutes,  Section  905. 
S.  222,  1887. 


CHAP.  XVIII.]  ACTIONS   AT  LAW.  401 

is  proved  to  have  been  destroyed  by  fire,1  or  rendered  illegi- 
ble by  wear  or  time,2  and  not  restored  by  the  court  to  which 
it  pertains,3  it  may  be  proved  by  a  witness  who  examined 
and  copied  it  when  it  was  still  unharmed.4  But  parol  evi- 
dence will  not  be  admitted  of  a  record  of  which  only  a  part 
is  lost.  The  part  which  still  exists,  must  be  produced  or 
proved  by  an  officially  attested  copy.5 

§  527.  The  twentieth  defence  calls  for  the  introduction  in 
evidence,  of  a  properly  certified  copy  of  the  foreign  patent 
which  is  relied  upon  to  curtail  the  term  of  the  patent  in 
suit ;  and  if  the  parties  offer  no  testimony  to  aid  the  court 
in  determining  whether  the  foreign  patent,  so  proved,  is  for 
the  same  invention  as  the  United  States  patent  upon  which 
the  action  is  based,  then  the  court  will  determine  that  point 
from  an  inspection  of  the  two  documents.6  But  if  expert 
evidence  on  that  subject  is  offered,  it  will  doubtless  be 
received.7  And  a  foreign  patent  is  evidence  of  its  own  dura- 
tion ;  and  will  be  held  not  to  have  been  extended,  in  the 
absence  of  evidence  that  it  has  been.8 

§  528.  The  twenty-first  defence  is  supported  by  proof  that 
the  plaintiff  has  made  or  sold  one  or  more  specimens  of  the 
patented  article  without  marking  it  "patented,"  together 
with  the  day  and  year  whereon  the  patent  was  granted.9 
When  such  evidence  is  introduced,  the  burden  is  shifted  to 
the  plaintiff,  to  show  that  before  suit  was  brought  the 
defendant  was  duly  notified  that  he  was  infringing  the  pat- 
ent, and  that  he  continued  to  infringe  after  such  notice.10 

§  529.  The  twenty-second  defence  may  sometimes  be  sus- 
tained by  means  of  pointing  out  faults  in  the  plaintiff's 

1  United    States    v.    Delespine's      Blatch.  439,  1880. 

Heirs,  12  Peters,  654,  1838.  7  Bischoff  v.   Wethered,   9  Wal- 

2  Little    v.     Downing,    37    New      lace,  812,  1869. 

Hampshire,  355,  1858.  8  Edison  Electric   Light    Co.    v. 

3  Revised  Statutes,  Sections  899      Electric  Supply  Co.  60  Fed.  Rep. 
and  900.  404,  1890. 

4  1  Wharton  on  Evidence,  135.  9  Revised  Statutes,  Section  4900. 
6Nims  v.  Johnson,  7  California,          10  Goodyear  «.  Allyn,  6  Blatch.  36, 

110,  1857.  1868. 

6  De    Florez    v.    Raynolds,     17 


402  ACTIONS  AT   LAW.  [CHAP.  XVIII. 

proof  of  title.  Where  that  proof  is  apparently  complete,  it 
can  be  attacked  by  the  introduction  of  assignments  or  grants 
in  writing,  which  intervene  between  some  of  the  links  of  the 
plaintiff's  chain  of  title  in  such  a  way  as  to  destroy  or  impair 
its  continuity.  The  numerous  points  of  law  relevant  to  title 
are  explained  in  the  eleventh  chapter  of  this  book.  It  is 
enough  to  say  in  this  connection  that  no  title  will  be  recog- 
nized in  a  court  of  law,  unless  it  is  evidenced  by  instruments 
in  writing.1 

§  530.  The  twenty-third  defence  may  be  sustained  by 
evidence  of  a  written  or  a  parol  license,  or  of  an  express  or 
an  implied  license.  And  a  license  may  be  a  defence  to  an 
infringement  suit,  even  where  the  license  fee  is  in  arrears.2 
Licenses  form  the  subject  of  the  twelfth  chapter  of  this 
book  and  to  that  chapter  recourse  may  be  had  for  further 
information  in  regard  to  the  proper  evidence  to  support 
this  defence. 

§  531.  The  twenty-fourth  defence  may  be  sustained  by 
proof  of  a  total  or  partial  release,  given  after  the  infringe- 
ment was  committed  and  before  the  action  was  commenced, 
or  it  may  be  sustained  pro  tanto,  by  a  partial  release  given 
even  after  the  action  was  begun.3  A  paper  cannot  be  a 
release,  if  executed  before  the  infringement  to  which  it  refers 
was  committed,  because  no  man  can  relinquish  what  he 
does  not  possess. 

Whether  a  release,  given  only  to  a  joint  inf ringer  with  the 
defendant,  can  be  invoked  by  the  defendant  himself,  is  a 
question  to  which  no  categorical  answer  can  at  present  be 
given.  It  depends  upon  the  question  whether  contribution 
can  be  enforced  between  infringers,  and  that  point  has  never 
been  settled  by  the  courts.  Nothing  more  useful  can  there- 
fore be  said  in  this  connection  than  to  state  the  principles 
upon  which  the  two  questions  seem  to  depend. 

The  doctrine  that  there  can  be  no  contribution  between 
tort-feasors,  does  not  generally  apply  to  cases  where  the 

1  Revised  Statutes,  Section  4898.          3  Burdell  v.  Denig,  92  U.  S.  721, 
a  Keyes  «.  Mining  Co.  158  U.  S.      1875. 
150,  1895. 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  403 

wrong-doers  suppose  their  doings  to  be  lawful.1  This  is  some- 
times true  of  infringers  of  patents.  When  they  infringe,  they 
are  perhaps  ignorant  of  the  patents  which  they  violate ;  or 
if  they  know  of  the  patents,  they  are  apt  to  give  themselves 
the  benefit  of  every  suggested  ground  for  doubt,  and  thus 
suppose  that  their  doings  do  not  constitute  an  infringe- 
ment. Such  wrong-doing  is  mala  prohibita,  rather  than 
mala  in  se.  Therefore,  it  seems  to  be  generally,  if  not 
universally  true,  that  where  one  of  several  joint  infringers 
is  sued  alone,  and  suffers  and  pays  a  judgment  for  the  joint 
infringement,  he  may  compel  his  co-infriugers  to  contribute 
their  due  portion  of  that  payment  by  means  of  an  action  to 
enforce  its  refunding.  That  being  so,  it  will  follow  that  a 
release  to  one  joint  inf ringer  will  operate  to  release  all  his 
co-inf ringers  from  the  claim  of  the  patentee.  Where  con- 
tribution can  be  enforced  between  tort-feasors,  a  full  release 
to  one  must  release  all ;  for  if  it  did  not  do  so,  it  would  not 
fully  release  that  one.  The  releasee  would  not  be  fully 
protected  by  his  release,  unless  his  co-infringers  would  also 
be  protected  by  it,  because  otherwise  the  releasee  would 
still  be  liable  to  an  action  for  contribution  brought  against 
him  by  a  joint  tort-feasor  who  had  been  compelled  to 
respond  in  damages  for  the  joint  infringement.  The  true 
rule,  therefore,  appears  to  be  that  a  plain  release  given  to 
either  of  several  joint  inf  ringers  may  be  successfully  invoked 
in  a  court  of  law,  not  only  by  the  nominal  releasee,  but 
also  by  either  or  all  of  his  co-infringers. 

§  532.  The  twenty-fifth  defence  may  be  successful  with- 
out any  evidence,  because  the  burden  of  proof  is  upon  a 
plaintiff  to  show  an  infringement,2  and  because  a  plaintiff 
may  fail  to  sustain  that  burden.  Accordingly,  in  one  lead- 
ing law  case  the  defendant  was  the  prevailing  party  on  the 
circuit,  and  in  the  Supreme  Court,  though  the  plow  which 
he  made  was  nearly  identical  with  that  covered  by  the 


1  Bailey  v.  Bussing,  28  Connect!-      453, 1844;  Royer  v.  Mfg.  Co.  20  Fed. 
cut,  461. 1859.  Rep.  853,  1884. 

2  Brooks  v.  Jenkins,  3  McLean, 


404  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

plaintiff's  patent,  and  though  the  defendant  introduced  no 
evidence  on  the  subject  of  infringement,  nor  indeed  on  any 
other.1  So,  also,  in  a  leading  case  in  equity,  the  defendant, 
though  beaten  on  the  circuit,  successfully  interposed  the 
defence  of  non-infringement  in  the  Supreme  Court,  without 
any  evidence  on  that  side  of  the  issue,  and  against  the 
contrary  testimony  of  several  experts.8  But  these  were 
somewhat  clear  cases  of  non-infringement,  and  it  would  be 
injudicious  to  rely  upon  such  a  defence  without  evidence  to 
support  it,  in  any  case  wherein  the  question  of  infringement 
is  really  debatable  in  the  light  of  the  law.  Where  a  thing 
made  or  used  or  sold  by  the  defendant  is  proved  or  is  stipu- 
lated, and  where  a  competent  expert  testifies  that  it  is 
substantially  the  same  as  that  which  appears  to  be  covered 
by  the  patent  in  suit,  it  is  generally  advisable,  and  sometimes 
necessary,  for  the  defendant  to  introduce  evidence  tending 
to  show  non-infringement,  if  he  means  to  rely  upon  that 
defence.3  Evidence  of  this  sort  may  consist  of  the  testi- 
mony of  experts  who  are  acquainted  with  the  letters  patent 
in  suit,  and  with  the  doings  of  the  defendant,  and  are  of 
opinion  that  those  doings  are  substantially  different  from 
everything  which  appears  to  be  secured  by  the  letters  pat- 
ent, and  can  give  an  intelligent  reason  for  that  opinion. 
But  such  testimony  must  describe  the  defendant's  doings, 
to  enable  the  court  to  judge  the  correctness  of  its  com- 
parisons.4 This  testimony,  like  all  other  testimony  of 
experts  on  questions  of  infringement,  is  necessarily  based 
on  hypothetical  constructions  of  the  patents  in  suit,  and  is 
therefore  to  be  disregarded,  if  the  judge  finds  those  hypo- 
thetical constructions  to  be  substantially  erroneous. 

Whether  the  fact  that  the  defendant  conformed  his  doings 
to  a  junior  patent  is  admissible  as  tending  to  show  non- 
infringement  of  the  patent  in  suit,  is  a  question  which  the 


1  Prouty  v.  Ruggles,  16  Peters,  3  Bennet  v.  Fowler,  8  Wallace, 
336,  1842.  447,  1869. 

2  Railway  Co.  «.  Sayles,  97  U.  S.  4  Goldie  v.  Iron  Co.  64  Fed.  Rep. 
554,  1878.  240,  1894. 


'CHAP.  XVIII.]  ACTIONS   AT  LAW.  405 

Supreme  Court  once  decided  in  the  affirmative,1  and  after- 
ward in  the  negative.2  The  reason  of  the  matter  is  with  the 
later  decision,  because  a  thing  may  be  a  patentable  improve- 
ment on  a  prior  thing,  at  the  same  time  that  it  is  a  clear 
infringement  of  a  patent  for  that  thing.3  But  junior  patents 
are  introduced  in  evidence  in  many  cases  without  objection 
from  plaintiffs,  and  are  considered  by  courts  as  explanatory 
of  defendant's  doings,  where  those  doings  are  shown  to 
conform  to  junior  patents. 

§  533.  The  twenty-sixth  defence  requires  to  be  proved  as 
pleaded.  Where  it  depends  upon  estoppel  inpais,  it  may 
be  proved  by  parol,  or  by  the  production  of  documents, 
according  as  the  ground  of  the  estoppel  consists  of  things 
done,  or  words  spoken,  or  consists  of  words  which  were 
committed  to  writing.  Where  the  defence  depends  upon 
estoppel  by  deed,  the  document  must  be  produced  or  other- 
wise proved  according  to  the  rules  of  evidence  applicable  to 
such  cases ;  and  where  it  depends  upon  estoppel  by  record, 
or  res  judicata,  the  record  must  be  proved  in  accordance 
with  the  laws  governing  such  evidence. 

§  534.  The  twenty -seventh  defence  seldom  requires  any 
evidence  to  sustain  it,  because  the  Federal  courts  take 
judicial  notice  of  the  statutes  of  limitation;4  and  because 
the  plaintiff's  pleadings  and  proofs,  when  taken  together, 
will  generally  show  when  the  infringement  sued  upon  was 
committed.  But  if  the  plaintiff's  presentation  of  the  case 
leaves  the  latter  point  uncertain  to  such  an  extent  as  to 
affect  the  question  of  the  operation  of  a  statute  of  limitation, 
the  burden  is  then  cast  upon  the  defendant  to  prove  that 
part  or  all  of  the  infringement  is  old  enough  to  be  barred 
by  the  statute  which  he  pleaded.5 


1  Corning  v.  Burden,  15  Howard,  Co.  66  Fed.  Rep.  1006,  1895. 

252,  1853.  4  Pennington  v.  Gibson,  16  How- 

2.Blanchard  v.  Putnam,  8  Wai.  ard,  79,  1853;  Cheever  v.  Wilson,  9 

lace,  420,  1869;    Norton  ».   Eagle  Wallace,  121,  1869. 

Can  Co.  59  Fed.  Rep.  138,  1893.  6  Russell  v.  Barney,  6  McLean, 

3  Westinghouse  v.  Power  Brake  577,  1855. 


406  ACTIONS   AT  LAW.  [CHAP.  XVIII. 

§  535.  Testimony  in  actions  at  law  for  infringements  of 
patents  may  always  be  taken  orally  in  open  court ;  and  it 
may  be  taken  by  depositions  in  writing  where  the  witness 
lives  more  than  one  hundred  miles  from  the  place  of  trial, 
or  when  he  is  bound  on  a  voyage  at  sea,  or  is  about  to  go 
out  of  the  United  States  and  out  of  the  judicial  district  in 
which  the  case  is  to  be  tried,  or  to  a  greater  distance  than 
one  hundred  miles  from  the  place  of  trial,  before  the  time 
of  trial,  or  when  he  is  ancient  and  infirm.  The  sorts  of 
magistrates  before  whom  such  a  deposition  may  be  taken 
are  judges  of  any  United  States  court;  judges  of  any 
supreme,  superior,  or  county  court,  or  court  of  common 
pleas  in  any  of  the  United  States ;  commissioners  of  United 
States  circuit  courts;  clerks  of  United  States  circuit  or 
district  courts ;  mayors  or  chief  magistrates  of  cities ;  and 
notaries  public.  If  any  such  magistrate  is  counsel  or 
attorney  for  either  party,  or  interested  in  the  event  of  the 
cause,  he  is  disqualified  from  acting.  Before  such  a  depo- 
sition is  taken,  reasonable  notice  thereof  must  be  given  in 
writing  by  the  party  intending  to  take  it,  or  his  attorney  of 
record,  to  the  opposite  party,  or  his  attorney  of  record,  as 
either  may  be  nearest,  and  that  notice  must  state  the  name 
of  the  witness,  and  the  time  and  place  of  taking  the  deposi- 
tion.1 The  formalities  to  be  observed  in  taking  and  trans- 
mitting such  depositions  are  prescribed  in  Sections  864  and 
865  of  the  Revised  Statutes ;  and  they  must  be  strictly  com- 
plied with,  in  order  to  make  such  depositions  admissible  as 
against  proper  objections.  Indeed,  no  such  deposition  is 
admissible  in  any  event,  unless  it  appears  to  the  satisfaction 
of  the  court  that  the  witness  is  dead,  or  gone  out  of  the 
United  States,  or  to  a  greater  distance  than  one  hundred 
miles  from  the  place  where  the  court  is  sitting,  or  that,  by 
reason  of  age,  sickness,  bodily  infirmity,  or  imprisonment, 
he  is  unable  to  travel  and  appear  at  court.2  Where  the 
witness  testified  in  his  deposition  to  the  then  existence  of 
the  fact  which  authorized  its  taking,  that  fact  is  presumed 

i  Revised  Statutes,  Section  863.  2  Revised  Statutes,  Section  865. 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  407 

to  exist  at  the  time  the  deposition  is  offered  in  evidence, 
and  in  the  absence  of  contrary  proof,  the  deposition  itself 
will  satisfy  the  court  that  it  is  entitled  to  be  admitted.1 
Depositions  may  also  be  taken  in  patent  cases  in  the  mode 
prescribed  by  the  laws  of  the  respective  States.2 

Most  objections  to  depositions,  in  order  to  be  efficacious, 
must  be  made  before  the  depositions  are  received  in  evi- 
dence ;  for  when  introduced  with  the  acquiescence  of  the 
opposite  party,  they  cannot  afterward  be  excluded  on  the 
ground  that  they  were  not  taken  in  accordance  with  the 
rules  prescribed  therefor.3  But  where  evidence  is  pertinent 
to  either  of  several  possible  defences,  one  or  more  of  which 
were  pleaded,  and  one  or  more  of  which  were  not  pleaded 
by  the  defendant;  the  fact  that  the  evidence  was  not  objected 
to  when  taken  or  admitted,  does  not  make  it  admissible  in 
support  of  any  defence  which  was  not  pleaded.4 

§  536.  The  judge  may  direct  the  jury  to  return  a  verdict 
for  the  defendant,  where  it  is  entirely  clear  that  the  plain- 
tiff cannot  recover,  but  not  otherwise.5  Such  a  direction 
may  therefore  be  given,  where  want  of  novelty  or  want  of 
invention  is  clearly  shown  by  a  prior  patent,6  but  not  where 
that  question  is  doubtful.7  And  such  a  direction  may  be 
given  where  the  question  of  infringement  depends  entirely 
upon  the  construction  of  the  patent ;  and  where  that  con- 
struction does  not  depend  upon  any  doubtful  question  of 
the  prior  art.8  But  where  the  question  of  infringement 
depends  upon  the  construction  of  the  patent,  and  that  con- 
struction depends  upon  a  doubtful  question  in  the  prior  art, 
the  latter  question  should  be  left  to  the  jury ;  and  the 


1  Whitford  v.  Clark  County,  119  1873 ;  Keyes  «.  Grant,  118  U.  S.  25, 
U.  8.  524, 1886.  1886. 

2  27  Statutes  at  Large,  Chap.  14,  •  Market  St.  Ry.  Co.  ®.  Rowley, 
p.  7.  155  U.  S.  625,  1895. 

3  Evans  v.  Hettlch,  7  Wheaton,  7  San   Francisco    Bridge    Co   v. 
453,  1822.  Keating,  68  Fed.  Rep.  353,  1895. 

4  Zane  v.  Soffe,  5  Bann.  &  Ard.  8  DeLoriea  v.  Whitney,  63  Fed. 
284,  1880.  Rep.  611,  1894;  Cramer  v.  Fry,  68 

5  Klein  «.  Russell,  19  Wall.  463,  Fed.  Rep.  201,  1895. 


408  ACTIONS   AT   LAW.  [CHAP,  XVIII. 

dependent  question  of  infringement  should  also  be  left  to 
the  jury  to  decide.1  A  motion  that  the  judge  direct  the 
jury  to  return  a  verdict  for  the  defendant  needs  not  to 
specify  the  reason  on  which  it  is  based  ;  but  that  reason  will 
naturally  be  stated  in  the  argument  which  is  made  to  support 
the  motion.2 

§  537.  Instructions  to  juries  set  forth  the  construction  of 
patents3  and  embody  all  the  law  that  is  applicable  to  the 
material  facts  in  evidence,  but  need  embody  no  other.4  In 
ascertaining  that  law,  the  judges  resort  to  the  statutes  of 
the  United  States,  and  to  the  decisions  of  the  United  States 
Supreme  Court ;  and  where  further  information  is  required, 
they  examine  or  call  to  mind  the  decisions  of  the  Circuit 
Courts  of  Appeals,  and  of  the  Circuit  Courts  of  the  United 
States.  But  judges  are  not  bound  to  conform  their  instruc- 
tions to  any  statements  of  law  contained  in  any  opinion  of 
any  court,  unless  that  statement  was  strictly  applicable  to 
the  case  then  before  the  court  which  made  it.5  The  Supreme 
Court  has  sometimes  decided  cases,  after  full  argument, 
quite  contrary  to  its  own  previous  obiter  dicta  ;  and  the  cir- 
cuit court  decisions  contain  a  number  of  passing  remarks 
which  cannot  be  harmonized  with  the  positive  decisions  of 
the  supreme  tribunal,  nor  be  incorporated  into  any  systema- 
tic and  consistent  science.  The  statements  of  the  best  text- 
writers  are  more  likely  to  be  followed  by  the  federal  courts 
than  are  the  previous  dicta  of  the  judges  of  those  courts, 
because  the  best  legal  authors  steep  their  minds  in  all  the 
subjects  which  they  treat,  and  hold  those  subjects  in  solu- 
tion there  while  writing  their  books,  so  as  to  avoid  incon- 
sistencies and  attain  harmony ;  while  the  dicta  of  judges 
are  separately  written  down,  without  full  opportunity  for 


1  Royer  «.  Belting  Co.  135  U.  8.  4  Haines  «.  McLaughlin.  185  U. 
325,  1890.  S.  598,  1890. 

2  May  «.  Juneau  County,  137  U.  5  Day  v.  Rubber  Co.  20  Howard, 
S.  410,  1890.  216,    1857 ;     Day    V.     Stellman,    1 

s  Holmes  v.  Truman,  67  Fed.  Rep.  Fisher,  487, 1859. 
545,  1895. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  409 

comparison  with  adjudicated  precedents,  or  harmonization 
with  established  principles. 

Instructions  to  juries  may  express  the  opinions  of  the 
judges  upon  the  questions  of  fact  to  be  decided,1  but  an 
instruction  should  not  enforce  those  opinions  upon  the  jury 
for  its  guidance,2  and  should  not  include  the  reading  of  a 
charge  which  has  been  given  to  a  jury  in  another  case.3 
While  the  judge  is  bound  not  to  tell  the  jury  how  to  decide 
any  issue  of  fact,  the  judge  will  tell  them  what  issues  of 
fact  they  are  to  decide,  and  those  are  the  issues  in  the 
pleadings,  and  not  some  other  issue  which  the  judge  may 
think  is  the  one  upon  which  the  merits  of  the  case  really 
depend.4 

In  the  State  courts  of  most  of  the  States,  counsel  have  a 
right  to  require  all  instructions  to  be  given  in  writing  ;  but 
the  judges  of  the  Federal  courts  are  not  controlled  in  the 
manner  of  charging  juries  by  State  regulations,  and  there- 
fore instructions  in  patent  cases  may  be  given  in  writing, 
or  may  be  given  orally,  at  the  option  of  the  court.5 

§  538.  The  verdict  in  a  patent  action  will  be  for  the  plain- 
tiff, if  every  defence  except  non-infringement  fails,  and  if 
that  fails  as  to  any  one  claim  of  the  letters  patent.6  So  also, 
the  plaintiff  is  entitled  to  a  verdict,  where  every  defence 
fails  except  the  sixteenth,  seventeenth,  and  eighteenth,  and 
where  those  defences  lack  application  to  one  or  more  of  the 
claims  shown  to  have  been  violated.7  So  also,  if  the  twenty- 
second,  twenty-third,  or  twenty-fourth  defence  is  the 
only  successful  one,  and  if  that  is  successful  only  as  to  part 
of  the  alleged  infringement,  the  plaintiff  will  be  entitled  to 


1  Haines  «.  McLaughlin,  135  U.  6  Lincoln  t>.  Power,  151  U.  S.  442, 
8.  593,  1890 ;  Coupe  v.  Royer,  155  1894. 

U.  S.  579, 1895.  «  Waterbury  Brass  Co.  v.  New 

2  Turrill  «.  Railroad  Co.  1  Wall.  York  Brass  Co.  3  Fisher,  43,  1858. 
491,  1863.  7  Gage  v.  Herring.  107  U.  S.  640, 

3  Arey  ».  DeLoriea,  55  Fed.  Rep.  1882  ;  Gould  t>.  Spicer,  15  Fed.  Rep. 
323, 1893.  344.  1882;  Cote  v.  Moffltt,  15  Fed. 

4  Grant  v.  Raymond,  6   Peters,  Rep.  345,  1883. 
244, 1832. 


410  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

a  verdict  as  to  the  residue ;  and  the  same  thing  may  be 
true  of  the  twenty-sixth  or  of  the  twenty-seventh  defence. 

§  539.  A  new  trial  may  be  obtained  by  the  defeated  party, 
if  the  jury  disregarded  the  instructions  of  the  judge ; l  or 
failed  to  correctly  apply  them  to  the  issues  of  the  case ; 2 
but  not  where  the  only  error  complained  of  is  an  alleged 
wrong  decision  of  such  an  issue,  unless  it  was  decidedly 
against  the  weight  of  evidence.8 

Excessive  assessment  of  damages,  even  where  it  is  unde- 
niably so,  does  not  always  entitle  the  defendant  to  a  new 
trial.  Such  an  error  may  be  cured  by  the  plaintiff  remit- 
ting such  a  sum  as  the  judge  thinks  constitutes  the  excess, 
in  all  cases  where  he  thinks  that  the  error  of  the  jury  arose 
from  inadvertence;  but  where  the  circumstances  of  the 
case  clearly  indicate  that  the  error  arose  from  prejudice,  or 
from  reckless  disregard  of  duty  on  the  part  of  the  jury,  a 
new  trial  will  be  granted.4  But  no  excessive  verdict  can  be 
corrected  by  the  Circuit  Court  of  Appeals,  unless  the 
trial  judge  made  some  error  which  entitles  the  defeated 
party  to  a  new  trial.5 

Errors  made  by  judges  may  also  entitle  a  party  to  a  new 
trial,  but  no  such  error  will  have  that  effect  unless  it  was 
excepted  to  at  the  time  it  was  committed ;  nor  where  it 
consisted  in  erroneous  admission  of  evidence,  which  the 
subsequent  course  of  the  trial  rendered  nugatory.6  So,  also, 
where  the  error  of  the  judge  consisted  in  erroneous  instruc- 
tions relevant  to  damages,  the  plaintiff  may  avoid  a  new 


1  Tucker  v.  Spalding,  13  Wallace,  horn,  1  Cliff.  538,  1860;  Roberts  «. 
453,  1881.  Schuyler,  12  Blatch.  448,  1875. 

2  Johnson  «.  Root,  2  Cliff.  108,  4  Stafford   «.   Hair-Cloth    Co.    2 
1862.  Cliff.  83,  1862;  Johnson  «.  Root,  2 

3  Alden  v.  Dewey,  1  Story,  336,  Cliff.  108,  1862;  Russell «.  Place,  9 
1840;  Stimpson  v.  Railroads,  1  Wai-  Blatch.  175,  1871. 

lace,  Jr.  164,  1847;  Allen  v.  Blunt,  6  Hogg  v.  Emerson,  11  Howard, 

2  Woodbury  &  Minot,  121,   1846;  607,  1850. 

Aiken  v.  Bemis,   3    Woodbury  &  6  Allen  v.  Blunt,  2  Woodbury  & 

Minot,  348,  1847;  Wilson  e.  Janes,  Minot.  121,  1846. 

3  Blatch.  227,  1854;  Bray  v.  Harts- 


CHAP.  XVIII.]  ACTIONS  AT  LAW.  411 

trial  by  consenting  that  the  verdict  be  reduced  to  nominal 
damages  and  costs.1 

Newly  discovered  evidence  may  also  furnish  a  good 
ground  for  granting  a  new  trial ;  but  not  where  that  evidence 
might,  with  due  diligence,  have  been  obtained  before  the 
former  trial,2  nor  where  it  is  merely  cumulative.3  But 
evidence  is  not  merely  cumulative,  where  it  refers  to  facts 
not  before  agitated,  though  it  may  refer  to  defences  which, 
in  the  former  trial,  were  based  on  other  facts.4  A  party 
moving  for  a  new  trial  upon  the  ground  of  alleged  newly 
discovered  evidence,  must  succeed  or  fail  on  the  strength  or 
weakness  of  the  case  as  it  is  disclosed  in  his  affidavits,  and 
in  the  answering  affidavits  of  the  other  party ;  for  the  mov- 
ing party  is  not  permitted  to  rebut  the  latter ;  nor  will  he 
be  entitled  to  a  new  trial,  if  the  opposing  affidavits  make 
out  a  strong  case  against  him.5  When  a  new  trial  is  granted 
on  the  ground  of  newly  discovered  evidence,  the  terms 
usually  are  that  the  costs  of  the  former  trial  must  first  be 
paid  by  the  applicant.6 

§  540.  Trials  by  a  judge  without  a  jury  require  to  be  so 
managed  that  the  issues  of  law  and  the  issues  of  fact  are 
kept  entirely  distinct ;  for  his  decisions  on  the  former  are 
reviewable  by  the  Circuit  Court  of  Appeals,  while  his  finding 
of  fact  has  the  same  operation  as  the  verdict  of  a  jury.7  If 
the  finding  of  the  judge  be  a  general  one,  it  is  conclusive 
on  all  issues  of  fact,  and  is  also  conclusive  on  all  questions 
of  law,  except  those  which  arise  upon  the  pleadings,  and 
those  which  the  bill  of  exceptions  specifically  presents  as 
having  been  ruled  upon  and  excepted  to  in  the  progress  of 
the  trial.8  If  the  finding  of  the  judge  be  a  special  one,  it 

1  Cowing  v.  Rumsey,  8  Blatch.      491, 1833. 

36,  1870.'  6  Aiken  0.  Bemis,  3  Woodbury  <fc 

2  Washburn  v.  Gould,   3  Story,      Minot,  358,  1847. 

122, 1844.  7  Revised  Statutes,  Section  649; 

3  Ames   «.   Howard,  1    Sumner,  St.  Paul  Plow  Works  ®.  Starling, 
482, 1833.  140  U.  S.  197,  1891. 

4  Aiken  v.  Bemis,  3  Woodbury  &  8  Insurance  Co.  ®.  Sea,  21  Wallace, 
Minot,  358,  1847.  160, 1874. 

6  Ames  v.  Howard,   1    Sumner, 


412  ACTIONS   AT   LAW.  [CHAP.  XVIII. 

will  still  be  conclusive  on  the  facts  found ;  but  the  sufficiency 
of  those  facts  to  support  the  judgment  will  be  open  to  review 
in  the  Circuit  Court  of  Appeals.1  Where  the  judge  simply 
finds  for  the  defendant,  and  enters  a  judgment  accordingly, 
that  judgment  can  be  taken  to  the  Circuit  Court  of  Appeals 
for  review  only  in  the  regular  common  law  method  of  a  bill 
of  exceptions  and  a  writ  of  error,  and  only  on  pure  ques- 
tions of  law.2  Where  the  judge  finds  as  a  fact  that  the 
patent  is  void  for  want  of  novelty,  or  that  the  defendant  has 
not  infringed  it,  and  thereupon  enters  a  judgment  for  the 
latter,  it  is  undeniable  that  the  fact  so  found  is  sufficient  to 
support  that  judgment.  In  arriving  at  his  opinion,  the 
judge  may  have  misunderstood  or  misapplied  the  tests  of 
novelty,  or  of  infringement,  but  still  his  finding  is  conclu- 
sive ;  because  the  Circuit  Court  of  Appeals  is  authorized  to 
examine  nothing  but  the  sufficiency  of  the  facts  found.3 
But  if  the  judge  finds  that  A.  B.  invented,  made  and  used 
a  certain  described  thing  in  the  United  States,  prior  to  the 
invention  of  the  patentee,  or  that  the  defendant  made,  used 
or  sold  only  a  certain  described  thing  during  the  life  of  the 
patent,  and  therefore  renders  a  judgment  for  the  defendant, 
that  judgment  will  be  reversed  by  the  Circuit  Court  of 
Appeals  on  a  writ  of  error,  if  that  court  is  of  opinion  that 
the  thing  invented,  made  and  used  by  A.  B.  did  not  nega- 
tive the  novelty  of  the  patent,  or  is  of  opinion  that  the 
thing  made,  used  or  sold  by  the  defendant  did  really 
infringe  the  patent  in  suit.4  These  illustrations  of  the 
practice  in  trials  by  a  judge  without  the  aid  of  a  jury  show 
that  where  special  findings  of  facts  are  adopted  as  the 
method  of  laying  a  foundation  for  a  review  of  the  case  by 
the  Circuit  Court  of  Appeals,  the  finding  ought  to  relate  to 
the  fundamental  facts  of  the  case,  and  not  merely  the  con- 
clusions of  fact  which  are  deducible  therefrom. 


1  Revised  Statutes,  Section  700.  lace,  307,  1874. 

2  Revised  Statutes,  Sections  649  4  French  v.  Edwards,  21  Wallace, 
and  700.  147,  1874;  Insurance  Co.  v.  Sea,  21 

3  Jennisons  v.  Leonard,  21  Wai-  Wallace,  160,  1874. 


CHAP.  XVIII.]  ACTIONS   AT   LAW.  413 

§  541.  Trial  by  referee  may  be  instituted  by  an  entry  of 
the  clerk  of  the  court,  made  at  the  request  of  the  parties, 
simply  indicating  that  the  case  is  to  be  referred  to  the  per- 
son or  persons  named  as  referee ;  or  it  may  be  ordained 
by  a  stipulation  in  writing,  signed  by  the  parties  or  their 
attorneys,  and  filed  in  the  case.  When  that  is  done,  a  rule 
may  be  issued,  or  an  order  of  court  may  be  entered,  refer- 
ring the  case  to  the  referee  indicated  by  the  parties,  and 
directing  him  to  hear  and  determine  all  the  issues  thereof. 
It  thereupon  becomes  the  duty  of  the  referee  to  hear  the 
parties,  and  then  to  decide  the  controversy  and  make  a 
report  to  the  court.  The  report  may  be  special,  setting 
forth  the  details  of  the  evidence  upon  which  it  is  based,  or 
it  may  be  general,  giving  only  the  conclusions  to  which  that 
evidence  carried  the  mind  of  the  referee.  To  that  report 
either  party  may  except  in  writing,  and  upon  the  hearing 
of  those  exceptions,  the  court  may  adopt  or  reject  the 
report  and  enter  judgment  accordingly,  or  it  may  recommit 
the  report  to  the  referee  with  further  directions.1 

Such  is  substantially  the  outline  of  the  trial  by  referee, 
which  is  delineated  in  the  decision  just  cited.  Inasmuch 
as  that  form  of  trial  is  not  provided  for  by  any  United 
States  statute,  its  details  are  regulated  by  the  laws  of  the 
particular  State  in  which  such  a  trial  is  had.2  Recourse 
must  therefore  be  had  to  those  laws  for  sundry  points  of 
information  relevant  to  the  methods  of  taking  testimony 
before  referees ;  the  time  when  referees'  reports  must  be 
made ;  the  weight  attached  to  such  reports  on  issues  of 
fact ;  and  the  proper  practice  by  means  of  which  to  secure 
the  judgment  of  the  court  upon  reviewable  points. 

§  542.  Judgments  follow  verdicts  of  juries,  findings  of 
judges,  or  reports  of  referees;  unless  those  verdicts  are  set 
aside,  those  findings  reconsidered  and  modified,  or  those 
reports  rejected  or  recommitted.  It  is  not  the  practice  of 
the  United  States  Circuit  Courts  to  require  a  rule  for  a 


1  Heckers  v.  Fowler,  2  Wallace,          a  Revised  Statutes,  Sections  721 
132,  1864.  and  914. 


414  ACTIONS  AT  LAW.  [CHAP.  XVIII. 

judgment  to  be  entered  in  any  case.  Judgments  are 
entered  by  the  clerk  of  the  court  under  a  special  or  general 
authority  from  the  judge,  and  where  so  entered  are  binding 
as  the  act  of  the  court.1  The  circumstances  which  justify 
courts  in  entering  judgments  in  patent  cases,  for  any  sum 
above  the  amount  of  the  verdict,  finding,  or  report,  but  not 
exceeding  three  times  the  amount  thereof,  are  explained  in 
the  chapter  on  damages.  That  the  court  has  the  same 
power  in  this  particular,  in  cases  where  the  damages  are 
ascertained  by  the  finding  of  the  judge,  or  by  the  report  of 
a  referee,  that  it  has  in  cases  where  they  are  ascertained  by 
the  verdict  of  a  jury,  is  a  point  which  has  not  been  judicially 
decided,  but  is  one  which  can  hardly  be  doubted. 

§  543.  Costs  are  recoverable  by  all  plaintiffs  who  secure 
judgments  for  infringements  of  patents  ; 2  except  where  it 
appears  on  the  trial  that  one  or  more  of  the  claims  of  the 
letters  patent  are  voifl  for  lack  of  being  the  subject  of  a 
patent,  or  for  want  of  invention,  or  for  want  of  novelty,  and 
does  not  appear  that  the  proper  disclaimer  was  filed  in  the 
Patent  Office  before  the  commencement  of  the  action  ; 3  and 
except  where  part  of  the  patents  sued  upon  are  not  recov- 
ered upon;4  and  except  where  only  a  small  part  of  the 
infringement  alleged  by  the  plaintiff  is  found  by  the  verdict.5 

There  is  no  United  States  statute  which  provides  that 
defendants  shall  recover  costs  in  any  patent  case.  The 
common  law  of  England  allowed  no  costs  to  either  party  in 
any  action  at  law  ; 6  and  the  statutes  of  Gloucester,7  which 


1  Heckers  ».  Fowler,  2  Wallace,  Car  Co.  34    Fed.   Rep.  130,1888, 
132,  1864.  Ligowski  Clay  Pigeon  Co.  v.  Clay 

2  Revised  Statutes,  Section  4919;  Bird  Co.  34  Fed.  Rep.  328,   1888 ; 
Merchant  v.  Lewis,  1  Bond,  172,  National  Machine  Co.  v.  Brown,  36 
1857.  Fed,  Rep.  322,  1888;  Sohmid  ».  Mfg. 

3  Revised  Statutes,  Sections  973  Co.  37  Fed,  Rep.  348,  1889. 

4917,  and  4922.  6  Marks  Chair  Co.  v.  Wilson,  43 

4  Adams  v.  Howard,  19  Fed.  Rep.  Fed.  Rep^  304, 1890. 

319,  1884 ;  Albany  Steam  Trap  Co.  6  Day  v.  Woodworth,  13  Howard, 

v.  Felthousen,   20  Fed.   Rep.  640,  372,  1851. 

1884 ;  Mann's  Car  Co.  v.  Monarch  7  6  Edward  I.  Chapter  1. 1278. 


CHAP.   XVIII.]  ACTIONS   AT   LAW.  415 

supplied  that  defect  as  to  plaintiffs,  did  not  supply  it  as 
to  defendants.  The  statute  of  23  Henry  VIII.,  Chapter 
15,  enacted,  however,  that  where,  in  actions  on  the  case,  the 
plaintiff  is  nonsuited  after  the  appearance  of  the  defendant ; 
or  where  the  verdict  happens  to  pass,  by  lawful  trial,  against 
the  plaintiff,  the  defendant  shall  have  judgment  to  recover 
his  costs  against  the  plaintiff,  and  shall  have  such  process 
and  execution  for  the  recovery  of  the  same,  as  the  plaintiff 
might  have  had  against  the  defendant,  in  case  the  judgment 
had  been  given  for  the  plaintiff.  This  statute  of  Henry 
VIII.  having  been  enacted  before  the  founding  of  the  Eng- 
lish colonies  in  America,  and  being  suited  to  the  condition 
of  society  in  the  United  States,  is  in  force  in  the  United 
States  courts  to  the  same  extent  that  it  would  be  if  it  were 
one  of  the  rules  of  the  common  law.1 

§  544.  All  the  items  of  costs  which  are  taxable  in  the 
United  States  courts  are  specified  in  the  United  States 
statutes.2  The  province  of  a  taxing  officer  is  therefore  lim- 
ited to  comparing  suggested  items  with  the  particulars  of 
those  statutes,  and  to.  taxing  those,  and  only  those,  which 
he  finds  enumerated  therein.3  And  no  expenses,  other  than 
taxable  costs,  can  be  lawfully  inserted  in  any  cost  bill.4  On 
most  points,  the  statutes  relevant  to  fees  are  so  clear  that 
they  require  no  explanation  ;  but  in  some  particulars  they 
needed  and  have  received  judicial  construction.  Several 
such  cases  may  be  conveniently  explained  in  a  few  of  the 
sections  which  immediately  follow. 

§  545.  One  attorney's  docket  fee  is  taxable  in  each  case 
against  the  defeated  party.5  There  is  no  warrant  for  taxing 
the  unsuccessful  party  with  a  separate  docket  fee  for  each 


1  Hathaway  v.  Roach,  2  Wood-  8  Dedekam  v.  Vose,  3  Blatch.  153, 

bury  &  Minot,  69,  1846;  Bunker  ».  1853. 

Stevens,  26  Fed.  Rep,  249,  1885.  «  Parks  v.  Booth,  102  U.  S.  106, 

a  Revised  Statutes,  823,  983;  The  1880. 

Baltimore,  8  Wallace,  392,   1869 ;  *  Dedekam  v.  Vose,  3  Blatch.  153, 

Lyell  v.  Miller,  6  McLean,  422, 1855;  1853  ;  Troy  Iron  &  Nail  Factory  v. 

Wooster  v.  Handy,  23  Fed.  Rep.  Corning,  7  Blatch.  17,  1869  ;  Parker 

60,  1885.  v.  Bigler,  1  Fisher,  285,  1857. 


416  ACTIONS   AT  LAW.  [CHAP.    XVIII. 

of  his  adversary's  attorneys,  nor  with  a  separate  docket  fee 
for  each  term  during  which  a  case  has  been  pending  in 
court,  nor  for  taxing  any  docket  fee  in  favor  of  any  attorney 
of  the  defeated  party.  Neither  is  there  any  warrant  for 
taxing  an  attorney's  deposition  fee  in  favor  of  any  attorney 
of  the  beaten  party,  or  in  favor  of  more  than  one  attorney 
of  the  party  which  prevails  in  the  action.1  And  taxable  attor- 
ney's fees  are  taxed  in  favor  of  clients  to  help  them  pay  their 
attorneys,and  not  in  favor  of  attorneys  as  extra  compensation.2 

§  546.  The  fees  of  the  clerk  of  the  court  are  in  general 
taxable  against  the  defeated  party  ;  but  several  of  the  items 
to  which  he  is  entitled  are  not  so  taxable,  but  are  to  be  paid 
by  the  party  for  which  he  rendered  the  services  to  which 
they  refer.  Among  those  items,  are  copies  of  the  record 
ordered  by  a  party  for  his  own  use.3  As  the  greater  must 
include  the  less,  this  rule  must  apply  also  to  copies  of 
pleadings,  depositions  or  other  papers  which  form  parts  of 
the  records  of  case's.  The  extent  to  which  clerks  may  make 
records,  and  charge  defeated  parties  therefor,  depends  upon 
the  rules  of  each  particular  court.  In  some  districts,  those 
rules  appear  to  be  made  with  a  view  to  giving  the  clerks  as 
much  scope  in  this  respect  as  can  be  supported  by  any  argu- 
ment ;  while  in  other  courts,  the  practice  is  to  charge  par- 
ties with  no  more  recording  than  the  reasonable  requirement 
of  each  case  seems  to  demand. 

§  547.  The  fees  of  a  commissioner  or  other  magistrate, 
who  takes  a  deposition  in  a  case,  are  generally  taxable 
against  the  defeated  party,4  but  if  the  deposition  is  not 
offered  in  evidence  at  the  trial,  those  fees  cannot  be  so 
taxed.5  And  reasoning  by  analogy  from  the  taxation  of 
attorneys'  deposition  fees,  it  should  follow  that  magistrates' 
fees  are  not  taxable  on  depositions  which  are  offered  in 
evidence,  but  are  not  admitted.6 

1  Revised  Statutes,  Section  834.  4  Fry  v.  Yeaton,  1  Cranch's  Cir- 

2  Celluloid  Mfg.  Co.  v.  Chandler,      cuit  Court  Reports,  550,  1809. 

27  Fed.  Rep.  9,  1886  6  Hathaway  v.  Roach,  2  Wood- 

3  Caldwell  v.  Jackson,  7  Cranch,      bury  &  Minot,  75,  1846. 

277,  1812.  6  Revised  Statutes,  Section  824. 


CHAP.   XVIII.]  ACTIONS   AT  LAW.  417 

§  548.  Witness  fees  are  generally  taxable  against  the 
defeated  party,  whether  the  testimony  was  given  orally  in 
court  or  by  deposition  before  a  magistrate.1  But  they  are 
not  so  taxable  when  the  testimony  is  taken  by  deposition 
and  the  deposition  is  not  offered,2  or  if  offered,  is  not 
admitted  in  evidence.3  Nor  will  a  defeated  party  be  taxed 
with  the  fees  of  more  than  three  witnesses  to  one  fact,  unless 
the  prevailing  party  satisfies  the  court  by  affidavit,  that  the 
additional  witnesses  were  really  necessary  to  adequately 
support  his  contention  on  that  point.4 

Whether  any  defeated  party  is  taxable  with  the  fees  of 
any  witness  who  testified  on  request  and  without  a  subpoena, 
is  an  unsettled  question.  It  has  been  held  in  the  affirma- 
tive by  Judge  WOODRUFFS  and  Judge  HALL,6  and  in  the 
negative  by  Justice  McLEAN,7  Judge  SAWYER,®  and  Judge 
LEAVITT.9  The  ablest  arguments  on  the  two  sides  of  the 
issue  are  those  of  Judge  WOODRUFF  and  Judge  SAWYER  ;  and 
there  is  probably  nothing  to  be  said  on  the  subject  that  is 
not  said  in  one  or  the  other  of  the  five  cases  cited.  If  it  is 
necessary,  in  order  to  make  witness  fees  taxable,  that  the 
witness  should  be  served  with  a  subpoena,  it  is  not  neces- 
sary that  he  should  be  so  served  by  any  officer.  Service  by 
a  private  person  is  sufficient.10 

Witness  fees  are  taxable  in  favor  of  a  defendant,  though 
his  witnesses  are  not  examined,  because  the  action  is  not 
prosecuted  ;  and  where  witnesses  attend  more  than  once  at 
the  same  term,  because  of  a  stipulated  postponement  of  the 
trial ;  their  fees  are  to  be  taxed  as  for  continuous  attend- 
ance during  the  interim,  and  not  as  for  repeated  journeys 


1  Revised  Statutes,  Section  848.  Blatch.  510,  1869. 

2  Hathaway  «.  Roach,  2  Wood-          7  Dreskill  «.  Parish,  5  McLean, 
bury  &  Minot,  63,  1846.  213,  1851 

3  Section  547  of  this  book.  g  Spalding  v.  Tucker,  4  Fisher, 

4  Bussard  v.  Catalino,  2  Cranch's  637,  1871. 

Circuit  Court  Reports.  421,  1823.  9  Woodruff  v.  Barney,  2  Fisher, 

5  Dennis  v.  Eddy,  12  Blatch.  196,  244,  1862. 

1874.  l°  Power  v.  Semmes,  1  Cranch's 

6  Cummings     v.     Plaster    Co.    6  Circuit  Court  Reports,  247,  1805. 


418  ACTIONS   AT   LAW.  [CHAP.    XVIII. 

from  their  homes.1  Witnesses  from  a  distance  are  entitled 
to  fees  for  Sunday,  where  they  are  detained  over  that  day.2 

§  549.  The  taxation  of  costs  may  properly  be  made  at 
the  time  the  judgment  is  entered,  and  that  is  the  course 
which  best  secures  the  rights  of  the  parties.  But  a  blank 
may  be  left  in  the  judgment  for  that  purpose,  and  may  be 
filled  by  a  taxation  made  nunc pro  tune,  after  the  judgment 
has  been  affirmed  by  the  Circuit  Court  of  Appeals.3  Where 
the  former  practice  is  followed,  the  legality  of  the  taxation 
may  probably  be  reviewed  by  the  Circuit  Court  of  Appeals, 
if  the  case  is  taken  to  that  forum  by  the  defendant,  to 
secure  a  reversal  of  a  judgment  against  him  for  substantial 
damages  as  well  as  costs,  and  if  the  court  affirms  or 
modifies  the  judgment  as  to  the  damages.4  But  where  only 
nominal  damages  and  costs  are  adjudged  against  a 
defendant,  he  cannot  take  the  case  to  the  Circuit  Court  of 
Appeals  for  the  purpose  of  securing  a  reversal  of  the  judg- 
ment or  a  diminution  of  the  costs.5  Where  a  judgment  for 
costs  is  entered  against  a  plaintiff  on  the  basis  of  a  verdict 
for  the  defendant,  the  plaintiff  may  go  to  the  Circuit  Court 
of  Appeals  on  a  writ  of  error.  If  he  secures  a  reversal  of 
the  judgment  for  errors  on  the  trial,  there  will  be  no  occa- 
sion for  the  court  to  consider  the  correctness  of  the  taxation 
of  costs.  If,  on  the  other  hand,  the  court  finds  no  error 
upon  which  to  ground  a  reversal,  it  will  seek  for  no  error  in 
the  taxation.6 

The  clerks  of  the  Circuit  Courts  are  the  primary  taxing 
officers  of  those  tribunals ;  but  they  perform  that  duty 
under  the  general  or  particular  direction  of  the  judges. 
The  taxation  of  costs  is  ordinarily  made  by  the  clerk  on  his 


1  Hathaway  v.   Roach,  2   Wood-  1880. 

bury  &  Minot,  63,  1846.  6  Elastic  Fabric  Co.  v.  Smith,  100 

2  Schott  0.  Benson,  1  Blatch.  564,  U.  S.  110,  1879;  Paper-Bag  Cases, 
1850.  105  U.  S.  772,  1881. 

3  Sizer  v.   Many,  16  Howard,  98,  6  Canter  v.  Insurance  Companies, 
1853.  3  Peters,  318, 1830. 

4  Parks  v.  Booth,  102  U.  S.  106, 


CHAP.    XVIII.]  ACTIONS   AT   LAW.  419 

own  motion,  or  at  the  request  of  the  prevailing  party,  and 
without  notice  to  the  defeated  party.  If  the  latter  is  dis- 
satisfied with  the  result,  the  court  will  hear  his  motion  for 
a  retaxation.  If  such  a  motion  is  accompanied  with  an 
explanation  showing  colorable  ground  for  a  claim  of  error 
in  the  taxation,  the  court  will  order  the  clerk  to  retax  the 
costs,  upon  the  mover  giving  the  opposite  party  due  notice 
of  the  time  and  place  thereof,  and  paying  the  costs  occa- 
sioned thereby.1  Then,  if  either  party  is  dissatisfied  with 
the  result  of  the  retaxation,  he  may  appeal  to  the  court ; 
but  as  a  foundation  for  the  hearing  of  such  an  appeal,  he 
must  secure  from  the  clerk  an  itemized  bill  of  the  charges 
to  which  he  objects  ; 8  and  as  a  foundation  for  success  on 
that  hearing,  must  show  that  part  or  all  of  those  items  are 
unwarranted  by  the  statute,  or  are  untaxable  because  they 
refer  to  evidence  which  was  immaterial  to  the  case,  and 
improperly  taken  therein.3  All  of  these  proceedings  must 
take  place  at  the  term  in  which  the  judgment  is  entered;4 
except  in  cases  where  blanks  for  costs  are  left  in  judgments, 
pending  writs  of  error  from  the  Supreme  Court. 

§  550.  A  writ  of  error  properly  taken  out  from  the  office 
of  the  clerk  of  the  Circuit  Court  of  Appeals,5  will  carry  any 
action  at  law,  for  an  infringement  of  a  patent  to  that  court 
for  review,  regardless  of  the  amount  of  damages  of  contro- 
versy ; 6  and  whether  the  case  was  tried  by  a  jury,  by  a 
referee,  or  by  a  judge  alone.7  But  no  writ  of  error  can  carry 
any  question  of  fact  to  the  Circuit  Court  of  Appeals.8 

The  sole  function  of  such  a  writ  is  to  secure  from  that 
tribunal  a  review  of  the  questions  of  law  involved  in  a  case, 

1  Collins   v.  Hathaway,   Olcott's          6  Revised  Statutes,   Section  699; 
Reports,  182,  1845.  26    Statutes  at  Large,  Chap.  517, 

2  Dedekam  «.  Vose,  3  Blatch.153,      Sec.  6. 

1853.  7  York  &  Cumberland   Railroad 

3  Ecaubert  v.   Appleton,  67  Fed.  Co.  v.  Myers,  18  Howard,  246.  1855; 
Rep.  926,  1895.  fleckers  v. Fowler,  2  Wallace,  123. 

4  Blagrove  v.  Ringgold,  2  Cranch's  1864. 

Circuit  Court  Reports,  407,  1823.  8  Beckers  v.  Fowler,  2  Wallace, 

5  West  v.  Barns,  2  Dallas,  401,      123,  1864. 
1791. 


420  ACTIONS   AT   LAW.  [CHAP.    XVIII. 

or,  where  the  finding  below  was  made  by  a  judge,  and  was 
special,  to  secure  a  review  of  the  question  whether  the 
facts  so  found  are  sufficient  to  support  the  judgment  based 
thereon.1 

Any  action  at  law  for  infringement  of  a  patent  which  has 
been  pending,  and  has  been  decided  in  the  Supreme  Court 
of  the  District  of  Columbia,  may  be  taken  by  a  writ  of 
error  to  the  Court  of  Appeals  of  the  District  of  Columbia,2 
and  if  the  validity  of  the  patent  is  involved,  the  case  may 
likewise  be  taken  from  that  court  to  the  Supreme  Court  of 
the  United  States.3  But  actions  at  law  for  infringements 
of  patents  cannot  be  taken  from  any  Circuit  Court  of 
Appeals  to  the  Supreme  Court  by  a  writ  of  error  ;  though 
any  Circuit  Court  of  Appeals  may  certify  to  the  Supreme 
Court  any  question  of  law  upon  which  it  desires  the  instruc- 
tion of  that  court  for  its  proper  decision  ;  and  the  Supreme 
Court  may  send  a  certiorari  to  any  Circuit  Court  of  Appeals, 
requiring  any  case  for  infringement  of  a  patent  to  be  sent 
to  the  Supreme  Court  for  its  review  and  determination.4 

§  551.  Bills  of  exception,  allowed  and  signed,  or  sealed 
by  the  judge,  constitute  the  only  mode  by  which  the  ques- 
tions of  law  that  arise  on  the  trial  of  a  case,  can  be  pre- 
pared for  transmission  to  the  Supreme  Court  in  pursuance 
of  a  writ  of  error.5  But  a  paper  which  is  incorporated  in 
the  record,  and  which  has  all  the  substantial  characteristics 
of  a  bill  of  exceptions,  will  be  treated  as  such,  even  though 
it  is  not  so  entitled.6  Such  a  document  should  state  no 
more  of  the  case  than  is  necessary  to  present  the  questions 
which  are  reviewable  in  the  Circuit  Court  of  Appeals,  and 
which  the  plaintiff  in  error  seeks  to  have  reviewed  there.7 
If  those  questions  relate  only  to  the  pleadings,  the 


1  Revised  Statutes,  Section  700.  5  Insurance  Co.  v.  Lanier,  95  U. 

"  21  Statutes  at  Large,  Chap.  74,  S.  171,  1877. 

Sec.  7,  p.  435.  •  Herbert  v.  Butler,  97  U.  S.  319, 

3  27  Statutes  at  Large,  Chap.  74,  1877. 

Sec.  8,  p.  436.  Hausknecht'fl.Claypool,!  Black. 

4  26  Statutes  at  Large,  Chap.  517,  431,  1861. 
Sec.  6. 


CHAP.    XVIII.]  ACTIONS   AT  LAW.  421 

pleadings  only  should  be  inserted  in  the  bill  of  exceptions. 
Where  those  questions  relate  only  to  the  competency  of  a 
witness,  the  bill  of  exceptions  need  only  show  that  the  wit- 
ness was  offered,  and  was  accepted  or  rejected,  as  the  case 
may  be,  and  that  such  admission  or  rejection  was  duly 
excepted  to,  and,  in  case  of  a  rejection  of  a  witness  to  want 
of  novelty,  that  due  notice  of  the  fact,  to  be  proved  by  him, 
was  served  on  the  opposite  party  ; 1  and  where  particular 
answers  of  a  competent  witness  were  excluded  by  the  court 
below,  the  bill  of  exceptions  must  contain  those  answers, 
and  must  show  that  they  were  material  to  the  issues ;  and 
where  particular  questions  were  excluded,  and  therefore  not 
answered,  the  bill  of  exceptions  must  show  what  facts  the 
party  offered  to  prove  by  means  of  those  questions,  and 
that  such  facts  were  material  to  the  case.2  And  where  a 
particular  question  was  objected  to,  but  was  admitted  and 
was  answered,  the  bill  of  exceptions  must  show  what  the 
answer  was,  in  order  to  enable  the  Circuit  Court  of  Appeals 
to  pass  upon  the  propriety  of  the  evidence.3 

§  552.  Where  the  questions  which  are  sought  to  be 
brought  before  the  Circuit  Court  of  Appeals,  relate  only  to 
the  instructions  which  the  court  below  gave,  or  refused  to 
give  to  the  jury,  the  bill  of  exceptions  should  set  forth  the 
issues  of  the  pleadings,  and  the  substance  of  the  charge  or 
refusal  to  charge,  as  the  case  may  be,  together  with  what- 
ever part  of  the  evidence  is  necessary  to  enable  the  Circuit 
Court  of  Appeals  to  decide  upon  the  propriety,  or  impro- 
priety, of  the  action  of  the  court  below.  The  issues  of  the 
pleadings  should  be  stated  in  the  bill  of  exceptions,  for 
otherwise  the  appelate  tribunal  cannot  know  whether  the 
charge  or  refusal  to  charge,  which  was  excepted  to,  was 
material  to  the  case ;  and  because  the  Circuit  Court  of 
Appeals  will  not  sit  to  try  moot  issues  of  law,  nor  to  estab- 


1  Philadelphia  &  Trenton  Railroad  2  Railroad  Co.  v.  Smith,  21  Wai- 
Co,  v.   Stimpson,   14  Peters,   448,  lace,  255, 1874. 
1840;  Blanchard  v.  Putnam,  8  Wai-  8  Lovell  t>.  Davis,  101  U.  S.  542, 
lace,  420,  1869.  1879. 


422  ACTIONS    AT  LAW.  [CHAP.    XVIII. 

lish  legal  propositions  in  cases  wherein  those  propositions 
are  not  involved.1  The  substance  of  the  charge,  rather  than 
the  charge  in  extenso,  should  be  stated  in  the  bill,  because 
the  Circuit  Court  of  Appeals  cannot  afford  to  be  occupied 
in  listening  to  minute  criticisms  and  observations  upon 
expressions  incidentally  introduced  into  a  charge  for  pur- 
poses of  argument  or  illustration,  and  which,  if  they  were 
the  direct  point  in  judgment,  might  need  qualification,  but 
which  do  not  show,  that  upon  the  whole  the  relevant  law 
was  not  justly  expounded  to  the  jury.2  But  the  whole  sub- 
stance of  the  charge  should  be  stated  where  nothing  but 
charged  matter  is  excepted  to ;  because  if  part  is  omitted, 
the  Circuit  Court  of  Appeals  cannot  know  that  the  omitted 
portion  did  not  cure  the  faults  of  the  parts  inserted.  So 
also,  where  the  matter  which  is  excepted  to  is  a  refusal  to 
charge  ;  not  only  the  refused  instruction,  but  also  the  whole 
substance  of  the  given  charge,  should  be  inserted  in  the 
bill  of  exceptions ;  for  otherwise  the  Circuit  Court  of 
Appeals  cannot  be  informed  whether  the  refused  instruction 
was  not  substantially  contained  in  the  charge  which  was 
actually  given  ;  and  because  judges  are  never  bound  to 
instruct  juries  in  the  form  requested,  provided  they  sub- 
stantially embody  the  whole  of  the  relevant  law  in  the 
charges  which  they  give.3  Where  nothing  but  charged 
matter  is  excepted  to,  the  bill  of  exceptions  should  not  con- 
tain any  part  of  the  evidence ;  because  the  only  question 
before  the  Circuit  Court  of  Appeals  in  such  a  case  is  the 
correctness  of  the  charge.4  But  where  a  refusal  to  charge 
is  excepted  to,  the  bill  must  contain  the  evidence  to  which 
the  refused  instruction  relates,  or  must  contain  a  statement 
of  facts  pertinent  to  that  point,  and  a  statement  that  evi- 
dence was  introduced  tending  to  prove  those  facts  ;  because 


1  Jones  v.  Buckell,  104  U.  S.  554,  road   Co.   v.    Horst,   93  U.  S.  295, 
1881.  1876. 

2  Evans  ®.  Eaton,  7  Wharton,  356,  4  Pennock  v.  Dialogue,  2  Peters, 
1822.  1,  1829. 

3  Indianapolis  &  St.  Louis  Rail- 


CHAP,  xviii.]  "ACTIONS  AT  LAW.  423 

no  court  is  bound  to  give  any  charge  which  does  not  relate 
to  the  evidence,  no  matter  how  sound  the  proposed  instruc- 
tion may  be,  as  a  proposition  of  law. 

§  553.  Specific  exceptions  must  be  made  to  instructions, 
in  order  to  entitle  the  objector  to  a  review  of  those  instruc- 
tions in  the  Circuit  Court  of  Appeals.  Where  a  requested 
instruction  is  refused,  and  the  refusal  is  excepted  to,  that 
refusal  will  be  -sustained  by  the  Circuit  Court  of  Appeals, 
if  the  requested  instruction  was  unsound  in  any  particular.1 
Counsel  ought  therefore  to  carefully  separate  their  propo- 
sitions of  law  from  each  other  when  framing  their  requests 
for  instructions,  lest  one  erroneous  proposition  deprive  them 
of  the  benefit  of  several  sound  ones. 

§  554.  Exceptions  to  charges,  or  to  refusals  to  charge, 
must  be  made  and  noted  while  the  jury  is  at  the  bar.2  But 
bills  of  exception  may  be  drawn  up,  and  signed  or  sealed 
by  the  judge  at  any  time  before  the  expiration  of  the  term, 
unless  the  judge  enforces  some  rule  of  his  court  which  pre- 
scribes a  shorter  time  for  the  preparation  and  presentation 
of  such  documents  for  his  approval.  And,  if  not  otherwise 
too  late,  such  bills  may  be  prepared  and  signed  after  a  writ 
of  error  has  been  sued  out  from  the  Circuit  Court  of  Appeals 
to  transfer  the  case  to  that  tribunal.3 


1  Indianapolis  &  St.  Louis  Rail-  160,  1858. 

road  Co.  v.  Horst,  93  U.  S.  295,  3  Hunnicutt  v.  Peyton,  102  U.  8. 

1876.  353,  1880. 

2  Phelps  v.  Mayer,  15   Howard, 


CHAPTER  XIX. 

DAMAGES. 


555.  The  generic  measure  of  dam- 
ages. 

556.  Established  royalties  as  spe- 
cific measures  of  damages. 

557.  Tests  applied  to  royalties   on 
behalf  of  defendants. 

558.  Tests  applied  to  royalties  on 
behalf  of  plaintiffs. 

559.  Money  paid  for  infringement 
already    committed,     is      no 
measure  of  damages  in  another 
case. 

560.  Royalties  reserved  on  sales  of 
patents. 

561.  Royalties  for  licenses  to  make 
and    use,    and    royalties    for 
licenses  to  make  and  sell. 

562.  Proportion  of  licensed  to  unli- 
censed practice  of  an  invention. 


563.  Measure  of    damages  in  the 
absence    of    an    established 
royalty. 

564.  Damages  for  unlicensed  mak- 
ing, without  unlicensed  sell- 
ing or  using. 

565.  Evidence  of  damages. 

566.  Indirect  consequential    dam- 
ages. 

567.  Exemplary  damages. 

568.  Increased  damages. 

569.  Actual  damages  not  affected 
by  infringement  being  unin- 
tended. 

570.  Counsel  fees  and  other  expen- 
ses. 

571.  Interest  on  damages. 
571a.  Damages  in  design  cases. 


§  555.  THE  pecuniary  injury  which  a  plaintiff  incurs  by 
reason  of  a  defendant's  infringement  of  his  patent,  is  the 
generic  measure  of  the  damages  which  that  plaintiff  is 
entitled  to  recover  on  account  of  that  infringement.1  Such 
an  injury  is  often  called  the  plaintiff's  loss,2  and  sometimes 
it  is  strictly  that,  but  often  it  is  a  loss  only  in  the  sense 
that  it  is  a  failure  to  acquire  a  just  and  deserved  gain.3 
Whether  the  injury  caused  to  a  plaintiff  by  an  infringement 


1  Coupe  v.  Royer,  155  U.  S.  582, 
1895;  Goodyear  v.  Bishop,  2  Fisher 
158,  1861;  Graham  v.  Mfg.  Co.  24 
Fed.    Rep.    643,   1881;     Brickill  v. 
Baltimore,  60  Fed.  Rep.  98,  1894. 

2  Suffolk  Co.  v.  Hayden,  3  Wal- 


lace, 315,  1865;  Cowing  v.  Rumsey, 
8  Blatch.  36,  1870;  McComb  v.  Bro- 
die,  1  Woods,  161,  1871;  La  Baw  v. 
Hawkins,  2  Bann.  &  Ard.  563,  1877. 
3  Hobbie  «.  Smith,  27  Fed.  Rep. 
662,  1886. 

424 


CHAP.  XIX.]  DAMAGES.  425 

was  a  loss  in  one  or  the  other  of  these  senses,  its  magnitude 
must  always  be  ascertained,  in  order  to  ascertain  the 
amount  of  the  damages  which  he  is  entitled  to  recover. 
The  amount  of  the  profits  which  the  defendant  derived 
from  his  infringement,  has  no  direct  relevancy  to  the  ques- 
tion of  the  plaintiffs  damages  ;  because  these  profits  are 
sometimes  much  larger  than  the  plaintiffs  pecuniary  injury  j1 
and  where  they  are  smaller,  that  fact  is  no  defence  to  the 
plaintiffs  right  to  recover  full  damages  for  the  pecuniary 
injury  which  the  infringement  caused  him  to  incur.8  But 
where  a  patentee  has  elected  to  recover  the  infringers 
profits,  instead  of  his  own  damages,  in  an  action  in  equity; 
he  cannot  recover,  for  the  same  infringement,  his  damages 
in  an  action  at  law.3 

To  ascertain  the  extent  of  the  pecuniary  injury  which  a 
particular  infringement  caused  a  particular  plaintiff,  it  is 
necessary  to  ascertain  the  difference  between  his  pecuniary 
condition  after  that  infringement,  and  what  that  condition 
would  have  been  if  that  infringement  had  not  occurred.4 
That  difference  depends  upon  the  way  in  which  the  plaintiff 
availed  himself  of  the  exclusive  right  infringed,  at  the  time 
the  infringement  took  place.  If  he  so  availed  himself,  by 
granting  licenses  to  others  to  do  the  things  which  the 
defendant  did  without  a  license,  then  that  difference  consists 
in  his  not  having  received  the  royalty  which  such  a  license 
would  have  brought  him.5  If  he  so  availed  himself,  by 
keeping  his  patent  right  a  close  monopoly  and  granting 
licenses  to  no  one,  then  that  difference  consists  of  the 

1  Seymour   «.    McCormiek,     16         4  Yale  Lock  Co.  ».  Sargent,  117 
Howard,   480,   1853;  New  York  «.       U.  S.  552,  1885. 

Ransom,  23  Howard,  487,  1859;  5  Seymour «.  McCormick.16  How- 
Packet  Co.  v.  Sickles,  19  Wallace,  ard,  480,  1853;  New  York  «.  Ran- 
611,1873.  som,  23  Howard.  487,  1859;  Philip 

2  Emerson   v,    Simm,   6    Fisher,  v.    Nock,    17    Wallace,  462,   1873; 
281,  1873;  Dental  Vulcanite  Co.  *.  Clark  <o.  Wooster,   119  U.  S.  326, 
Van  Antwerp,  2  Bann.  &  Ard.  255,  1886;  Tilghman  v.  Proctor,  125  U. 
1876.  8.  143,  1887;  Graham  «.   Mfg.   Co. 

3  Child  v.  Iron  Works,  19  Fed.  24  Fed  Rep.  643,  1881;  Timken  v. 
Rep.  258, 1884.  Olin,  41  Fed.  Rep.  171,  1890. 


426  DAMAGES.  [CHAP.  XIX. 

money  he  would  have  realized  from  such  a  close  monopoly 
if  the  defendant  had  not  infringed,  but  which  that  infringe- 
ment prevented  him  from  receiving.1  Therefore  there  are 
several  methods  of  assessing  damages  for  infringements  of 
patents.  The  primary  method  consists  in  using  the  plain- 
tiffs established  royalty  as  the  measure  of  those  damages  f 
and  the  second  consists  in  ascertaining  those  damages  by 
ascertaining  what  the  defendant's  interference  with  the 
plaintiff's  close  monopoly  prevented  the  latter  from  deriv- 
ing therefrom.3  It  is  convenient  to  consider  these  two 
criteria  of  damages  separately,  and  in  the  order  in  which 
they  have  been  stated. 

§  556.  Royalties,  as  measures  of  damages,  are  sometimes 
objected  to  by  defendants,  and  sometimes  by  plaintiffs. 
When  invoked  by  a  plaintiff,  a  royalty  is  liable  to  one- class 
of  tests,  applied  on  behalf  of  the  defendant ;  and  when 
invoked  by  a  defendant  to  limit  the  plaintiff's  recovery, 
it  is  liable  to  another  class  of  tests,  applied  on  behalf  of 
the  plaintiff. 

§  557.  A  defendant  may  successfully  object  to  a  given 
royalty,  as  a  measure  of  the  plaintiffs  damages,  unless  it 
was  uniform,  and  was  actually  paid  or  secured  before  the 
defendant's  infringement  was  committed,  by  a  sufficient 
number  of  persons  to  show  that  people  who  have  occasion 
to  purchase  a  license  under  the  patent,  can  afford  to  pay 
that  royalty.4  The  sale  of  a  single  license  is  not  sufficient 
to  establish  a  royalty  ;5  because  one  purchaser  may  give  a 
larger  sum  for  a  license  than  he  or  any  other  can  afford  to 
pay  ;  whereas  such  a  business  error  is  not  likely  to  be  made 
by  a  considerable  number  of  persons  when  buying  licenses 

1  Philip  e.  Nock.  17  Wallace,  462,  4  Rude  «.   Westcott,   130  U.  S. 
1873;    Yale  Lock  Co.   v.   Sargent,  152.  1889;  Adams  v.  Stamping  Co. 
117  U.  S.   552,    1885;    McComb  v.  28  Fed.  Rep.  366,  1886;  Hunt  Bros. 
Brodie,  1  Woods,  153, 1871;  Covert  Fruit  Packing   Co.   v.   Cassidy,  53 
«.  Sargenti*38  Fed.  Rep.  238,  1889.  Fed.  Rep.  262,  1892. 

2  Brickill  v.  Baltimore,  60  Fed.  5  Judson  v.  Bradford,  3.  Bann  & 
Rep.  98,  1894.  Ard.  549,  1878;  Vulcanite    Paving 

3  Zane  v.  Peck,  13  Fed.  Rep.  475,  Co.  v.  Pavement  Co.  36  Fed.  Rep. 
1882.  378,  1888. 


CHAP.  XIX.]  DAMAGES.  427 

under  the  same  patent.  The  unanimous  opinion  of  twelve 
average  men  is  thought,  to  be  the  most  reliable  criterion  of 
guilt  or  innocence ;  but  no  reasonable  person  would  hold 
that  view  of  the  opinion  of  any  one  of  the  twelve.  In  like 
manner,  the  unanimous  acquiescence  of  a  considerable 
number  of  men  in  a  particular  royalty,  is  evidence  of  its 
substantial  justice,  while  the  acquiescence  of  one  only  of 
the  same  men  would  have  no  convincing  force. 

The  amount  of  the  royalty  relied  upon  must  have  been 
actually  paid  or  secured  by  the  licensees  in  order  to  make 
it  a  measure  of  damages  against  other  infringers.  Were  the 
rule  otherwise,  there  would  be  no  safeguard  against  collu- 
sion between  patentees  and  licensees  for  the  purpose  of 
imposing  on  infringers  and  other  third  parties.  It  follows 
that  the  mere  production  of  a  quantity  of  licenses,  purport- 
ing to  have  been  granted  at  a  certain  rate,  cannot  establish 
a  royalty  at  that  rate.  Somebody  must  make  oath  that  the 
ostensible  price  of  the  licenses  was  their  true  price,  before 
they  can  have  that  effect.  The  oath  and  not  the  license 
being  the  best  evidence  of  the  royalty,  the  royalty  may  be 
proved  by  the  oath  without  the  production  of  the  license, 
even  where  the  license  is  in  writing.1 

A  royalty,  in  order  to  be  binding  on  a  defendant  who  was 
a  stranger  to  the  licenses  which  established  it,  must  be  a 
uniform  royalty.2  This  rule  does  not  imply  that  a  patentee 
may  not  change  the  rate  of  his  royalty  as  often  as  he  can 
get  a  sufficient  number  of  licensees  to  acquiesce  in  such  a 
change ; 3  but  it  does  exclude  from  consideration  all  such 
licenses  as  were  given  at  variant  rates,  for  no  better  reason 
than  variant  ability  on  the  part  of  the  licensees  to  negotiate 
for  a  license  or  to  resist  a  suit  for  infringement.4 

So,  also,  a  particular  royalty  may  be  successfully  objected 
to  by  a  defendant,  if  it  was  not  established  till  after  the 

1  Wooster  v.  Simonson,  20  Fed.          3  Asmus  v.  Freeman,  34  Fed.  Rep. 
Rep.  316,  1884;  Timken  «.  Olin,  41      902,  1888. 

Fed.  Rep.  170,  1890.  *  Black  «.  Munson,  14  Blatch.  268, 

2  Westcott  v.  Rude,  19  Fed.  Rep.      1877;  United  Nickel  Co.  v.  Railroad 
833,  1884.  Co.  36  Fed.  Rep.  190,  1888. 


428  DAMAGES.  [CHAP.  JJX. 

infringement  sued  upon  was  committed.1  And  it  is  prob- 
able that  a  defendant  may  avoid  the  application  of  a 
particular  royalty  by  showing  that  a  different  rate  was 
established  in  the  particular  city,  county  or  State  wherein 
he  unlawfully  availed  himself  of  the  patentee's  invention. 

§  558.  A  plaintiff  may  successfully  object  to  a  particular 
royalty  as  a  measure  of  his  damages,  where  that  royalty  was 
established,  and  was  intended  to  be  established,  within  a 
particular  territory  only,  or  where  it  was  changed  or  aban- 
doned before  the  infringement  in  suit  was  committed.  These 
two  points  rest  upon  obvious  reasons.  A  patentee  may  wish 
.to  hold  a  close  monopoly  on  his  invention  in  Maine,  while 
willing  to  grant  licenses  in  Florida ;  or  he  may  rightfully 
demand  a  much  larger  royalty  in  Minnesota  than  that  which 
he  is  willing  to  accept  in  Texas  or  in  Oregon.  In  such  a 
case,  it  is  clear  that  his  Oregon  royalty  is  not  to  be  forced 
upon  him  for  infringement  committed  in  Minnesota ;  and 
that  his  business  in  Maine  is  not  to  be  ruined  by  infringers 
who  have  nothing  worse  to  fear  at  the  end  of  the  suit  than 
the  payment  of  a  royalty  like  that  established  in  Florida. 
So,  also,  it  has  often  happened,  and  may  happen  again,  that 
an  inventor  is  forced  by  poverty,  or  other  misfortune,  to 
accept  inadequate  royalties  during  the  earlier  years  of  his 
exclusive  right.  In  such  a  case,  it  is  clear  that  he  ought 
to  be  permitted  to  increase  the  rate  whenever  he  can  get 
licensees  to  consent  thereto,  or  to  abandon  his  royalty 
altogether  and  hold  a  close  monopoly  on  his  invention,  as 
far  as  he  can  do  so  consistently  with  licenses  outstanding. 

§  559.  Money  paid  for  infringement  already  committed 
does  not  establish  nor  tend  to  establish  a  royalty.2  A  price 


1  Emigh  t>.  Railroad  Co.  6  Fed.  Co.  v  Mfg.  Co.  19  Fed.  Rep.  517, 
Rep  284,  1881.  1884;    Westcott  v.  Rude,   19  Fed. 

2  Rude  v.  Westcott,  130  U.  S.  152,  ReP-  832,  1884;  Gottfried  «.  Brew- 
1889:    Comely  v.  Marckwald,    131  iQg  Co.    22  Fed.    Rep.  433,    1884; 
U.  S.  159.  1889;  Black  v.  Munson,  Comely  v.  Marckwald,  32  Fed.  Rep. 
14  Blatch.  268,  1877;  Greenleaf  v.  292  1885;  United  Nickel  Co  v  Ra.il- 
Mfg.  Co.  17  Blatch.  253,  1879;  Mat-  road  Co.  36  Fed.  Rep.  190,  1888; 
thews  v.  Spangenberg,  14  Fed.  Rep.  Keyes  v.  Refining  Co.  43  Fed.  Rep. 
350, 1882;  National  Car  Brake  Shoe  478.  1890. 


CTTAP.  XIX.]  DAMAGES.  429 

paid  to  compromise  a  pending  action,  or  an  existing  right" 
of  action,  may  sometimes  be  larger  and  sometimes  be  smaller 
than  a  proper  royalty  would  be.  It  may  be  larger  where 
the  inf ringer  is  a  person  who  is  disinclined  to  litigation,  or 
where  he  has  some  reason  to  fear  a  judgment  for  triple 
damages,  or  where  the  compromise  releases  him  not  only 
from  damages,  but  also  from  all  rights  of  action  for  infringer's 
profits.  It  may  be  smaller  where  the  infringer  is  presum- 
ably insolvent,  or  where  the  amount  involved  is  too  small 
to  justify  the  expense  incident  to  its  collection  by  an  action 
at  law. 

§  560.  A  royalty  which  is  reserved  as  the  whole  or  a  part 
of  the  purchase  price  of  a  patent,  is  not  a  proper  one  to 
measure  damages  as  against  an  infringer.1  It  may  be  too 
large,  or  it  may  be  too  small  for  that  purpose.  It  will  be 
too  large  when  the  patent  is  of  such  a  nature  that  the  buyer 
can  afford  to  pay  more  for  a  close  monopoly,  than  for  a 
license  to  compete  with  other  licensees.2  It  will  be  too 
small,  where  it  is  for  the  interest  of  the  owners  of  the 
patent  to  subdivide  the  right  to  practice  the  invention.  In 
the  latter  class  of  cases,  the  buyer,  in  order  to  get  paid  for 
introducing  the  invention  and  retailing  the  licenses,  must 
sell  them  at  a  higher  rate  than  that  which  he  pays  to  the 
patentee. 

§  561.  A  royalty  provided  for  in  licenses  to  make  and 
use,  ia  no  measure  of  damages  for  an  infringement  which 
consisted  of  making  and  selling  the  patented  thing;  nor  is 
a  royalty  which  was  established  by  licenses  to  make  and 
sell  specimens  of  the  invention  covered  by  a  patent,  any 
criterion  of  the  injury  which  may  have  been  inflicted  on  the 
pecuniary  interests  of  the  owner  by  unlawfully  making  and 
using  such  specimens.3  These  rules  rest  upon  undeniable 
reasons.  The  value  of  some  patents  resides  almost  entirely 
in  the  exclusive  right  to  make  and  sell,  while  that  of  others 


1  La  Baw  v.  Hawkins,  2  Bann.  &      147,  1886. 

Ard.  564,  1877.  3  Colgate  «.  Mfg.  Co.  28  Fed.  Rep. 

2  Colgate  v.  Mfg.  Co.  28  Fed.  Hep.      147,  18S6. 


430  DAMAGES.  [CHAP.  XIX. 

consists  almost  wholly  in  the  exclusive  right  to  make  and 
use  the  inventions  which  they  respectively  cover. 

§  562.  In  measuring  damages  with  a  royalty,  due  regard 
must  be  had  to  proportion.  Where  an  infringement  was 
smaller  in  extent  or  shorter  in  duration  than  the  correspond- 
ing doings  which  were  authorized  by  the  licenses  which 
established  the  royalty,  it  is  but  just  that  the  damages 
should  be  assessed  at  a  correspondingly  smaller  sum,  unless 
there  are  special  facts  in  the  case  which  render  the  partic- 
ular extent  of  the  infringement  immaterial  to  the  plaintiff!1 
In  like  manner,  damages  will  amount  to  a  sum  correspond- 
ingly larger  than  the  royalty  which  constitutes  their  criterion, 
when  the  infringement  in  suit  was  larger  or  was  longer  than 
the  doings  authorized  by  the  licenses  which  established  the 
royalty.  So,  also,  where  only  part  of  the  inventions  cov- 
ered by  a  particular  patent  are  unlawfully  appropriated  by 
an  infringer,  he  is  liable  for  only  an  equitable  proportion 
of  the  royalty  which  has  been  established  for  all  of  those 
inventions  jointly;2  and  where  a  royalty  has  been  estab- 
lished for  the  joint  employment  of  all  of  the  inventions 
covered  by  several  patents,  damages  for  the  infringement 
of  part  of  those  patents  may  be  equitably  assessed  by 
dividing  that  royalty  into  portions  proportionate  to  the 
value  of  the  several  inventions  covered  by  those  patents.3 
But  the  plaintiff  must  furnish  data  in  his  evidence,  upon 
which  to  make  this  division.4 

§  563.  Where  no  established  royalty  is  applicable  as  a 
measure  of  the  damages  caused  by  a  particular  infringe- 
ment, those  damages  may  sometimes  be  ascertained  by  the 
second  method  ;  that  is,  by  finding  what  the  plaintiff  would 


i  Birdsall  v.  Coolidge,  93  U.  S.70,  Thread  Co.  27  Fed.  Rep.  865,  1886; 

1876;  Judson  v.  Bradford,  3  Bann.  Asmus  v.  Freeman,  34  Fed.  Rep. 

&  Ard.  549, 1878;  Wooster  v.  Simon-  903,  1888. 

son,  16  Fed.  Rep.  680,  1883;  West-         3  Porter  Needle  Co.«.  Needle  Co. 

cott  v.  Rude,   19  Fed.   Rep.   834,  22  Fed.  Rep.  829,  1885. 
1884;  Bates  v.  Railroad  Co.  32  Fed.  4  Hunt  Bros.  Fruit  Packing  Co. 

Rep.  628,  1887.  «.  Cassidy,  53  Fed.  Rep.  262,  1892. 

»  Willimantic  Thread  Co.  v.  Clark 


CHAP.  XIX.]  DAMAGES.  431 

have  derived  from  his  monopoly  if  the  defendant  had  not 
interfered,  but  which  he  failed  to  realize  because  of  that 
interference  with  his  rights.  Where  the  owner  of  a  patent 
is  able  to  supply  the  whole  demand  for  the  thing  it  covers 
or  produces,  and  where  the  whole  demand  would  go  to  him 
if  not  diverted  by  some  infringer,  the  hurtful  competition 
of  a  particular  infringer  may  reduce  the  amount  of  the  pat- 
entee's sales,  or  may  necessitate  a  reduction  of  his  prices, 
or  may  operate  in  both  these  injurious  ways.  In  such  a 
case,  the  sum  of  the  profits  which  the  patentee  would  have 
derived  from  the  sales  made  by  the  infringer,.  if  the  patentee 
had  made  those  sales,  and  the  sum  of  the  reduction  of  prices 
which  the  infringer's  competition  compelled  the  patentee 
to  make  upon  his  own  sales,  will  constitute  the  amount  of 
the  patentee's  damages.1  Or  the  patentee's  damages  may 
consist  of  one  of  these  elements  without  the  other,  where 
the  other  is  absent  or  cannot  be  proved.2  Proof  of  the  first 
of  these  elements  includes  evidence  to  show  what  profits 
the  patentee  would  have  derived  from  the  infringer's  sales, 
if  he  himself  had  made  them  without  interference  from  the 
infringer  ;3  and  evidence  to  show  that  he  could  have  supplied 
the  articles  which  the  infringer  sold  ;4  and  evidence  to  show 
that  the  persons  who  purchased  those  articles  from  the 
infringer  would  have  bought  them  from  him,  if  no  infringer 
had  interfered.5  But  the  last  of  these  points  may  be  suffi- 
ciently established  without  being  demonstrated  ;  because 
demonstration  would  generally  be  impossible,  and  because 


1  Fitch  T>.   Bragg,  16  Fed    Rep.  Co.  141  U.  S.  452,  1891. 

247,  1883;  Hobbie  «   Smith,  27  Fed.  6  Dobson  v.  Dornan,  118  U.  S.  18, 

Rep.  662,  1886;  Creamer  v.  Bowers,  1885;  Goodyear  v  Bishop,  2  Fisher 

35  Fed.  Rep.  207,  1888.  161,  1861;    Magic    Ruffle    Co.    v. 

2  Yale  Lock  Co.  •».  Sargent,  117  Douglas,  2  Fisher.  340,  1863;  Sar- 
U.  8.  552,  1885;  Boesch  «.  Graff,  133  gent  «.  Mfg.  Co.  17  Blatch.    247. 
U.  S.   705,   1891  ;  Seabury  «.  Am  1879;  Hall  v.  Stern,  20  Fed.  Rep. 
Ende,  152  U.  S.  569,  1894;  Am  Ende  788,  1884;  Roemer  v.  Simon,  31  Fed. 
D.  Seabury,  43  Fed.  Rep.  673,  1890.  Rep.  41,  1887;  Bell  «.  Stamping  Co. 

3  Comely  v.  Marckwald,  131    U.  32  Fed.  Rep.  551.  1887;  Tatum  v. 
S.  161,  1889.  Gregory,  51  Fed.  Rep.  447,  1892. 

4  Crosby  Valve  Co.«.  Safety  Valve 


432  DAMAGES.  [CHAP.  xix. 

every  reasonable  doubt  relevant  thereto  is  to  be  resolved  in 
favor  of  the  plaintiff.1  Proof  of  the  second  element  includes 
evidence  to  show  that  it  was  the  defendant's  infringement 
that  caused,  or  at  least  helped  to  cause,  the  reduction  of 
prices  which  the  patentee  was  compelled  to  make,2  and  evi- 
dence of  the  extent  of  the  reduction  so  caused  ;  3  but  it  does 
not  include  evidence  that  the  patentee  would  have  been 
asked  to  supply  the  particular  demand  which  was  supplied 
by  the  defendant,  if  the  defendant  had  not  supplied  it. 

Where  damages  cannot  be  assessed  on  the  basis  of  a  roy- 
alty, nor  on  that  of  lost  sales,  nor  on  that  of  reduced  prices; 
the  proper  method  of  assessing  them  is  to  ascertain  what 
would  have  been  a  reasonable  royalty  for  the  infringer  to 
have  paid.4  In  determining  this  point,  where  the  infringe- 
ment consisted  in  making  and  selling,  or  in  selling  after  a 
purchase,  the  profits  of  the  defendant  may  be  considered  ;  5 
and  where  the  infringement  consisted  in  using,  the  cost  and 
the  utility  of  the  patented  process  or  thing,  as  compared  with 
other  processes  or  things  known  at  the  time  of  the  infringe- 
ment, and  capable  of  doing  similar  work,  may  be  the  lead- 
ing guides.6  But  those  profits  or  advantages  do  not  alone 
show  what  a  reasonable  royalty  would  have  been,  because 
it  would  not  be  reasonable  for  a  royalty  to  be  as  large  as 
the  entire  benefit  derived  from  the  business  by  a  licensee. 
Therefore  an  instruction  to  a  jury,  that  the  plaintiff  was 
entitled  to  recover  whatever  value  the  defendant  had  received 
from  his  use  of  the  plaintiff's  invention,  was  an  error.7 


1  Creamer  v.  Bowers,  35  Fed.  Rep.  Packing  Co.   v.   Cassidy,  64  Fed. 
208,  1883.  Rep.  586,  1894. 

2  Ingersoll  v.  Musgrove,  3  Banri.  5  Hunt  Bros.  Fruit  Packing  Co. 
&  Ard    304,  1878  ;  Holmes  v.  Tru-  64  Fed.  Rep.  587,  1894. 

man,  67  Fed.  Rep.  545,  1895  «  Suffolk  Co.  v.  Hayden,  3  Wall. 

3  Comely  v.  Marckwald,   131    U.  315,  1865;  Ross  v.  Montana  Ry.  Co. 
S.  161,   1889;  Boesch  v.  Graff,  133  45  Fed.  Rep.  431, 1890;  Lee  v.  Pills- 
U.  8.  703,  1890.       . ,.  :  bury,  49  Fed.  Rep.  748, 1892;  Brick- 

4  Ross  v.  Montana  Ry.  Co.  45  Fed.  ill  «.  Baltimore,  60  Fed.  Rep.  98, 
Rep.  431,  1^90;  Hunt  Bros.  Fruit  1894. 

Packing  Co.   v.  Cassidy,   53  Fed.  7  Coupe  v.  Royer,  155  U.  8.  581, 

Rep.  262,   1892;  Hunt  Bros.  Fruit  1895. 


CHAP.  XIX.]  DAMAGES.  433 

§  564.  Damages  for  infringement  by  making,  without 
unlawfully  selling  or  using,  specimens  of  a  patented  thing 
will  be  nominal  only,1  unless  there  is  an  established  royalty 
for  such  making,  or  unless  such  making  is  followed  by  using 
or  selling  in  a  foreign  country,  or  is  followed  by  using  or 
selling  in  this  country  after  the  expiration  of  the  patent. 
Where  an  infringer  made  specimens  of  a  thing  covered  by  a 
patent,  and  afterward  sold  or  used  them  in  a  foreign  coun- 
try, the  measure  of  damages  is  whatever  royalty  has  been 
established  for  a  license  to  manufacture  such  specimens 
for  such  a  purpose.2  Where  no  royalty  of  the  kind  has  been 
established,  there  is  generally  no  way  of  assessing  damages 
in  such  a  case  other  than  to  determine  what  a  reasonable 
royalty  would  have  been.  Damages  can  seldom  be  assessed 
in  such  a  case  on  any  theory  that  the  infringer's  doings 
interfered  with  the  patentee's  sales  ;  because  it  will  gener- 
ally be  impossible  to  prove  that  the  foreign  demand  would 
otherwise  have  come  to  the  patentee.  These  considerations 
seem  also  to  apply  to  cases  where  the  infringement  consisted 
of  making  specimens  of  a  patented  thing  shortly  before  the 
expiration  of  the  patent,  with  a  view  to  using  or  selling 
them  shortly  after  that  event.  Such  a  scheme  of  proceed- 
ing is  undoubtedly  injurious  to  a  patentee,  for  if  persons 
wait  till  after  the  expiration  of  a  patent  before  making  the 
articles  it  covers,  they  will  not  be  able  to  use  or  sell  those 
articles  till  some  time  still  later;  and  during  the  interval  the 
patentee  may  nearly  or  quite  maintain  his  former  command 
of  the  market. 

§  565.  The  evidence  of  damages  must  be  reasonably  defi- 
nite,3 in  order  to  justify  a  jury  in  finding  a  verdict  for  more 
than  a  nominal  amount.  Conjecture  will  not  perform  the 
office  of  proof,  nor  can  imagination  take  the  place  of  calcu- 
lation in  this  behalf.4  But  this  rule  is  not  to  be  used  to 


1  Whittemore  v.  Cutter,  1  Galli-  1881. 

sou,  483,  1813;  Carter  v.  Baker,  4  3  Creamer  v.  Bowers,  35  Fed.  Rep. 

Fisher,  419,  1871.  208,  1888. 

2  Ketchum  Harvester  Co.  v.  John-  *  New  York  v.  Ransom,  23  How- 
son  Harvester  Co.  8  Fed.  Rep.  586,  ard,  487,  1859. 


434  DAMAGES.  [CHAP.  xix. 

defeat  the  ends  of  justice.  It  may  happen  that  a  plaintiff 
can  prove  the  measure  of  his  damages  with  precision,  while 
unable  to  prove  the  real  extent  of  the  defendant's  infringe- 
ment. In  such  a  case,  the  defendant  usually  can  remove 
the  uncertainty,  because  he  is  likely  to  know  or  be  able  to 
ascertain  what  and  how  much  he  has  done.  If  by  omitting 
to  supply  the  information,  a  defendant  could  avert  a  verdict 
for  proper  damages,  he  could  easily  defeat  a  meritorious 
cause.  But  the  law  will  not  allow  itself  to  be  thus  circum- 
vented. On  the  contrary,  it  is  the  rule  that  where  a  plain- 
tiff introduces  evidence  to  show  that  the  damages  were 
large,  and  to  show  the  amount  of  those  damages  as  accu- 
rately as  the  nature  of  the  case  permits  him  to  do,  and 
where  the  defendant  offers  no  evidence  upon  the  subject,  it 
becomes  the  function  of  the  jury  to  estimate  those  damages 
as  best  they  can,  on  the  basis  of  the  plaintiff's  evidence.1 
In  making  such  an  estimate,  a  jury  ought  to  resolve  every 
point  of  uncertainty  against  the  defendant,  for  he  had 
it  in  his  power  to  give  them  accurate  data  upon  which  to 
compute.2 

§  566.  Remote  consequential  damages  cannot  be  embodied 
in  a  verdict  for  an  infringement  of  a  patent.3  The  instances 
in  which  such  damages  have  been  claimed  are  but  few,  but 
they  are  likely  to  become  more  numerous  hereafter.  It  is 
therefore  proper  to  mention  such  injuries  as  will  probably 
be  held  to  fall  within  such  a  category. 

Pecuniary  injury  may  result  to  a  patentee  from  a  partic- 
ular infringement,  in  that  it  caused  him  to  lose  sales  on 
uiipatented  articles  usually  sold  with  the  patented  thing  in 
question ;  or  in  that  it  so  unexpectedly  reduced  the  business 
of  the  patentee  as  to  make  it  necessary  for  him  to  sell 
unpatented  property  at  less  than  its  real  value,  or  to  borrow 
money  at  more  than  a  proper  rate  of  interest,  in  order  to 
meet  his  pecuniary  engagements ;  or  in  that  it  encouraged 


1  Stephens  v.  Felt,  2  Blatch.  38,      Mfg.  Co.  19  Fed.  Rep.  520,  1884. 
1846.  3  Carter  v.  Baker,  4  Fisher,  421, 

2  National  Car  Brake  Shoe  Co.  v.      1871. 


CHAP.  XIX.]  DAMAGES.  435 

other  persons  to  infringe,  from  whom,  by  reason  of  insol- 
vency or  other  obstacle,  no  recovery  can  be  obtained ;  or  in 
that  such  infringement  caused  the  patentee  so  much  trouble 
and  anxiety  that  he  incurred  loss  from  inability  to  attend 
to  other  business.  But  pecuniary  injury  of  either  of  these 
kinds  would  be  such  an  indirect  consequential  matter  as 
not  to  furnish  any  part  of  a  proper  basis  for  recoverable 
damages. 

§  567.  Exemplary  damages  cannot  lawfully  be  given  by 
a  jury  for  any  infringement  of  a  patent.1  The  meaning  of 
this  rule  is  that  juries  are  to  base  verdicts  on  plaintiff's 
injuries,  and  not  on  defendant's  ill-deserts.  Their  function 
is  to  award  compensation  to  the  injured,  not  punishment  to 
the  injurer.  The  power  to  inflict  punitive  damages  is  com- 
mitted by  the  statute  to  the  judge.  He  may  exercise  that 
power  by  entering  a  judgment  for  any  sum  above  the  amount 
of  the  verdict,  not  exceeding  three  times  that  amount, 
together  with  costs,2  or  by  declining  to  increase  the  dam- 
ages beyond  the  amount  found  by  the  verdict ;  and  in  either 
case  his  judgment  will  not  be  overruled  by  the  Circuit  Court 
of  Appeals,  unless  the  evidence  clearly  demands  it.3  The 
costs  are  to  be  added  to  the  increased  verdict,  and  the  judg- 
ment cannot  be  entered  for  a  sum  three  times  greater  than 
the  aggregate  of  the  verdict  and  the  costs ;  and  if,  for  any 
reason,  no  costs  are  awarded  to  the  plaintiff,  that  fact 
neither  ousts  the  power  of  the  court  to  enter  a  judgment 
for  a  sum  larger  than  the  verdict,  nor  constitutes  a  reason 
for  exercising  that  power  where  no  other  reason  exists.4 
But  that  power  will  be  exercised  where  the  defendant's 
infringement  was  deliberate  and  intentional,  even  though  it 
may  have  been  committed  under  an  erroneous  opinion  of 


1  Wilbur  v.  Beecher,  2  Blatch.  Seymour  v.  McCormick,  16  How- 
143,  1850;  Hall  v.  Wiles,  2  Blatch.  ard,  489,  1853. 

200,    1851;    Parker   v.    Hulme,    1  8  Topliff  v.  Topliff,  145  U.  8.  174, 

Fisher,  56, 1849;  Haselden  v.  Ogden,  1892. 

3  Fisher,  378, 1868;  Russell  v.  Place,  4  Guyon  v.  Serrell,  1  Blatch.  246, 

5  Fisher,  134,  1871.  1847. 

2  Revised  Statutes,  Section  4919; 


436  DAMAGES.  [CHAP.  XIX. 

the  plaintiff's  rights;1  or  where  the  defendant  a'cted  in  bad 
faith,  or  has  been  stubbornly  litigious,  or  has  caused  unnec- 
essary trouble  and  expense  to  the  plaintiff;2  but  not  merely 
because  the  defendant's  defence  was  so  extensive  as  to 
require  great  expenditure  to  overcome  it.3 

§  568.  Increased  damages  may  properly  be  awarded  by  a 
court,  where  it  is  necessary  to  award  them  in  order  to 
prevent  a  defendant  infringer  from  profiting  from  his  own 
wrong,  whether  that  wrong  was  intentional  or  was  unwitting. 
The  power  conferred  by  the  statute  is  general.  It  is  not 
confined  to  awarding  punitive  damages,  but  is  to  be  exer- 
cised "  according  to  the  circumstances  of  the  case."  4  Among 
the  circumstances  of  patent  cases  is  the  fact  that  the  profits 
wrhich  defendants  derive  from  their  infringements  are  often 
much  larger  than  the  actual  damages  which  those  infringe- 
ments cause  plaintiffs  to  sustain.  If,  in  such  a  case,  the 
defendant  is  forced  to  pay  no  more  than  the  actual  dam- 
ages, it  is  clear  that  he  will  have  derived  advantage  from 
his  own  wrong.  It  would  be  an  imperfect  system  of  law 
that  would  thus  put  a  premium  upon  its  own  violation. 
Prior  to  1882  it  was  understood  that  means  of  preventing 
such  a  result  resided  in  an  option,  which  it  was  said  every 
patentee  had,  of  suing  at  law  for  his  damages,  or  in  equity 
for  the  infringer's  profits.5  But  in  that  year  that  doctrine 
was  set  aside  by  the  Supreme  Court,  and  the  jurisdiction 
of  equity  was  denied  to  a  large  class  of  cases  which  would 
be  entitled  to  such  a  jurisdiction  under  such  a  rule.6  In  a 
case  where  no  injunction  happens  to  be  proper,  and  wherein 


1  Russell  v.  Place,  9  Blatch.  175,  lace,  453, 1871;  Birdsall  v.  Coolidge, 
1871;  Peck  IB.  Frame,  9  Blatch.  194,  93  U.  S.  68,  1876;  Perry  v.  Corning, 
1871.  6  Blatch.  134,  1868;  Howes  v.  Nute, 

2  Day  v.  Woodworth,  13  Howard,  4  Cliff.  174,  1870;  Cowing  «.  Rum- 
372,  1851;  Teese  v.  Huntingdon,  23  sey,  8  Blatch.  36,  1870;    Smith  v. 
Howard,  2,  1859.  Baker's  Administrators,  1  Bann.  & 

s  Welling  v.  La  Bau,  35  Fed.  Rep.  Ard.  117,  1874. 
303,  1888.  6  Root  v.  Railway  Co.  105  U.  S. 

4  Revised  Statutes.  Section  4919.  189,  1881. 

5  Tucker   v.   Spalding,   13    Wai- 


CHAP.  XIX.]  DAMAGES.  437 

.the  defendant's  profits  are  larger  than  the  plaintiff's  dam- 
ages, there  is  now  no  certain  means  of  preventing  the 
defendant  from  deriving  advantage  from  his  own  wrong, 
other  than  that  which  resides  in  the  power  of  the  court  to 
enter  a  judgment  for  a  larger  sum  than  the  actual  damages 
found  in  the  verdict.  That  being  the  only  certain  means  of 
making  infringement  unprofitable  to  infringers,  it  may  well 
be  freely  used  for  that  purpose  by  the  Federal  courts.1 
Exemplary  or  increased  damages  are  not  forfeitures,  and 
liability  to  be  compelled  to  pay  such  damages,  does  not 
give  an  infringer  any  right  to  withhold  his  testimony,  as 
tending  to  criminate  himself.2 

§  569.  A  verdict  for  actual  damages  cannot  be -averted  by 
evidence  that  the  defendant  was  ignorant  of  the  existence 
of  the  patent  at  the  time  he  infringed.3  All  infringers  have 
constructive  notice  of  all  patents,  because  all  letters  patent 
are  recorded  in  the  Patent  Office.  There  is  no  more  hard- 
ship involved  in  the  rule  that  infringers  are  bound  to  take 
notice  of  patents,  than  there  is  in  the  rule  that  buyers  of 
land  are  bound  to  take  notice  of  the  real  estate  records,  or 
in  the  rule  that  all  citizens  are  bound  to  take  notice  of  the 
laws  of  their  country.  The  amount  of  pecuniary  injury 
which  an  infringement  causes  a  patentee,  is  not  affected  by 
the  fact  that  the  infringer  did  not  know  of  the  existence  of 
the  patent  which  he  infringed;  and  where  one  man  has 
obtained  possession,  through  his  own  mistake,  of  the  fruits 
of  the  property  of  another,  it  is  better  that  he  be  compelled 
to  relinquish  them,  than  that  the  true  owner  be  prevented 
from  enjoying  the  proceeds  of  his  own  estate. 

§  570.  Neither  counsel  fees  nor  any  other  expenses  inci- 
dent to  litigation,  can  be  included  in  a  verdict  for  actual 


1  See  Sections  419  and  420  of  this  8  Emerson  v.  Simm,  6  Fisher,  281, 

book.  1873;  Timken  9.  Olin,  41  Fed.  Rep. 

3  Masseth  v.  Johnston,  59  Fed.  170,  1890. 
Rep.  613,  1894. 


438  DAMAGES,  [CHAP.  XIX. 

damages  in  a  patent  case.1  There  is  no  more  reason  for 
allowing  a  successful  plaintiff  to  recover  such  items  than 
there  is  for  giving  a  similar  recovery  to  a  successful  defend- 
ant. Certain  expended  fees  may  be  recovered  as  costs  by 
either;  but  no  expenditures  or  costs  can  be  recovered  as 
damages. 

§  571.  Interest  should  be  allowed  on  royalties,  from  the 
time  those  royalties  ought  to  have  been  paid,  in  all  cases 
where  a  royalty  is  the  measure  of  the  plaintiff's  damages.2 
In  such  a  case  the  damages  are  liquidated  at  such  time  as 
the  royalty  would  have  been  due,  if  the  defendant  had 
elected  to  purchase  instead  of  to  infringe  the  right  to  use 
the  invention  in  suit.  No  interest  is  due  on  damages  meas- 
ured otherwise  than  by  a  royalty,  because  such  damages 
are  unliquidated  until  they  are  ascertained  by  an  action,3 
except  where  the  method  of  measurement  is  as  definite  and 
conclusive  as  it  is  in  the  case  of  a  royalty.4 

§  571a.  Damages  for  infringement  of  a  design  patent  are 
fixed  by  a  special  statute,  at  the  minimum  amount  of  two 
hundred  and  fifty  dollars,  and  at  a  maximum  amount  enough 
larger  than  that  to  equal  the  total  profit  made  by  the 
infringer  upon  the  infringing  article  or  articles  made  or  sold 
by  him.5  The  statute  does  not  clearly  state  whether  the 
two  hundred  and  fifty  dollars  is  recoverable  from  an 
infringer  for  each  of  his  infringements,  or  is  recoverable 
only  once  for  all  of  his  infringements  of  a  particular  design 
patent ;  but  the  courts  have  uniformly  administered  it  as 
having  the  latter  signification;  In  order  to  recover  under 


1  Day  v.  Woodworth,  13  Howard,  222,  1854  ;  Goodyear  v.   Bishop,   2 
373,  1851;  Teese  v.  Huntingdon,  23  Fisher,     162,     1861 ;     Locomotive 
Howard,  8, 1859;  Philip  v.  Nock,  17  Safety  Truck  Co.  v.  Pennsylvania 
Wallace,  462,  1873;  Whittemore  v.  RaiJroad  Co.  2  Fed.  Rep.  682,  1W80. 
Cutter,  1  Gallison.429, 1813;  Stimp-  3Gilpin  v.  Consequa,  3  Washing- 
son  «.  The  Rail  Roads,  1  Wallace,  ton,  194,  1813. 

Circuit  Court  Reports,  164,   1847;  4  Creamer  v.  Bowers,  35  Fed.  Rep. 

Holbrook  v.  Small,  3  Baiin.  &  Ard.  207,  1888. 

626,  1878.  5  24  Statutes  at  Large,  Ch.  105, 

2  McCormick  fl.Seymour,  3  Blatch.  p.  387. 


CHAP.  XIX.]  DAMAGES.  439 

this  statute,  the  plaintiff  must  show  that  the  defendant  knew 
of  the  plaintiffs  design,  and  knew  of  the  plaintiff's  patent, 
or  at  least  knew  of  facts  which  put  him  upon  his  inquiry  for 
that  patent ; l  and  that  he  knew  that  the  design  was  applied 
to  the  infringing  article,  without  the  license  of  the  owner  of 
the  patent.2  The  last  point  of  knowledge  will  be  presumed 
against  the  maker ;  but  as  against  a  dealer  whose  infringe- 
ment consisted  in  selling,  or  exposing  for  sale,  articles  man- 
ufactured by  another,  it  must  be  proved.3  The  entire  profits 
which  resulted  to  the  infringer  from  the  infringing  articles 
are  recoverable  under  this  statute  as  damages,  and  not 
merely  such  part  of  those  profits  as  was  due  to  the  use  of 
the  patented  design ;  and  the  statute  is  constitutional, 
although  it  provides  for  recoveries  which  are  in  the  nature 
of  penalties,  and  provides  that  those  recoveries  may  be 
obtained  upon  a  bill  in  equity  for  an  injunction,  as  well  as 
by  an  action  at  law.4  Where  the  complainant  in  a  bill  in 
equity,  waives  any  recovery  of  more  than  two  hundred  and 
fifty  dollars;  a  decree  will  be  entered  for  that  amount,  with- 
out an  inquiry  into  the  particular  extent  of  the  defendant's 
infringement.5  But  where  there  is  no  such  waiver,  the  case 
will  be  referred  to  a  master  to  ascertain  whether  and  how 
much  the  defendant's  profits  exceeded  two  hundred  and 
fifty  dollars.6 


1  Smith  v.  Stewart,  55  Fed.  Rep.  4  Untermeyer  v.  Freund,  58  Fed. 
484, 1893.  Rep.  211,  1893. 

2  Anderson  «.  Pittsburgh  Lumber  8  Pirkl    v.  Smith,  42  Fed.  Rep. 
Co.  47  Fed.  Rep.  68,  1891.  410,  1890. 

3  Anderson  v.  Saint,  46JFed.  Rep.  6  Ripley  v.  Elson  Glass  Co.  49 
765,  1891.  Fed.  Rep.  927,  1892. 


CHAPTER   XX. 


ACTIONS  IN  EQUITY. 


572.  Jurisdiction  of  equity  in  patent 
causes. 

573.  Jurisdiction  of  equity  to  assess 
and  decree  damages. 

574.  The  complainant. 

575.  The  defendant. 

576.  Original  bills. 

577.  The  title  of  the  court. 

578.  The  introductory  part. 

579.  The  stating  part. 

580.  The  prayer  for  relief. 

581.  The  interrogating  part. 

582.  The  prayer  for  process. 

583.  The  signature. 

584.  The  oath. 

585.  Bills  to  perpetuate  testimony. 

586.  Amendments    to    bills,   when 
allowed. 

587.  Amendments    to    bills,    when 
necessary. 

588.  Demurrers,  pleas  and  answers. 

589.  Pleas  in  equity. 

590.  Arguments  upon    pleas,    and 
replications  to  pleas. 

591.  Defences  in  equity  cases. 

592.  Non-jurisdiction  of  equity. 

593.  The  same  subject  continued. 

594.  Non-jurisdiction  in  equity, how 
set  up  as  a  defence. 

595.  Prior  adjudication  at  law  is 
not  necessary  to  jurisdiction 
in  equity. 

596.  Laches. 

597.  Laches,  how  set  up. 

598.  The  first  of  the  twenty-seven 
defences. 

599.  The  second  defence. 


600.  The  third  defence. 

601.  The  fourth  defence. 

602.  The  fifth  and  sixth  defences. 

603.  The  seventh  defence. 

604.  The  eighth  defence. 

605.  The  ninth  and  tenth  defences. 

606.  The  eleventh  defence. 

607.  The  twelfth  defence. 

608.  The  thirteenth  defence. 

609.  The  fourteenth  defence. 

610.  The  fifteenth  defence. 

611.  The  sixteenth  defence. 

612.  The  seventeenth  defence. 

613.  The  eighteenth  defence. 

614.  The  nineteenth  defence. 

615.  The  twentieth  defence. 

616.  The  twenty-first  defence. 

617.  The  twenty-second  defence. 

618.  The  twenty-third  defence. 

619.  The  twenty-fourth  defence. 

620.  The  twenty-fifth  defence. 

621.  The  twenty-sixth  defence. 

622.  The  twenty-seventh  defence. 

623.  Replications. 

624.  Subordinate    bills   in    aid    of 
original  bills. 

625.  Supplemental  bills. 

626.  Bills  in  the  nature  of  supple- 
mental bills. 

627.  Bills  of  revivor. 

628.  Bills  in  the  nature  of  bills  of 
revivor 

629.  Bills   of  revivor  and  supple- 
ment. 

630.  Leave  of  court  to  file  supple- 
mental bills,  and  bills  in  the 
nature  of  supplemental  bills. 

440 


CHAP.  XX.] 


ACTIONS   IN   EQUITY. 


441 


681.  Demurrers,  pleas  and  answers 
to  supplemental  bills  and  to 
bills  in  the  nature  of  supple- 
mental bills. 

632.  Hearings. 

633.  Interlocutory  hearings. 

634.  Questions  of  law  arising  on 
hearings. 

635.  Questions  of  fact  arising  on 
hearings. 

636.  Evidence  in  support  of  the  bill. 

637.  Evidence    in   support   of  de- 
fences. 

638.  Testimony. 

639.  Depositions. 

640.  Depositions    taken    in    other 
cases. 

641.  Documentary  evidence. 

643.  Trial  by  jury  in  equity  cases. 

643.  Hearings  by  masters  in  chan- 
cery.      ± . 

644.  Interlocutory  decrees. 

644a.  Appeals  from  interlocutory 
decrees. 


645.  Petitions  for  rehearings. 

646.  Rehearings  for  matter  appar- 
ent on  the  record. 

647.  Rehearings     on     account    of 
newly  discovered  evidence. 

648.  Supplemental     bills    in     the 
nature  of  bills  of  review. 

649.  Final  decrees. 

650.  Bills  of  review. 

651.  Bills    of    review    to    correct 
errors  apparent  on  the  plead- 
ings or  final  decree. 

652.  Bills  of  review  to  introduce 
evidence  discovered  after  the 
entry  of  the  final  decree. 

653.  Bills  in  the  nature  of  bills  of 
review. 

654.  Appeals 

655.  Hearings  on  appeals. 

656.  Decisions  on  appeals. 

657.  Certificates    of      division    of 
opinion. 


§  572.  JURISDICTION  in  equity,  in  patent  litigation-,  is  con- 
ferred upon  the  same  courts  that  are  authorized  to  exercise 
jurisdiction  at  law  in  that  branch  of  jurisprudence.1  The 
two  kinds  of  jurisdiction  are  kept  as  distinct  in  those  courts 
as  if  they  were  conferred  upon  different  tribunals.  Equita- 
ble relief  cannot  be  had  in  any  action  at  law ;  and  legal 
relief  cannot  be  had  in  any  action  in  equity,  except  as 
incidental  to  some  equitable  relief  granted,' or  at  least 
rightfully  prayed  for,  therein.  The  only  function  of  actions 
at  law  in  patent  cases  is  to  give  damages  for  past  infringe- 
ments of  patents.  The  principal  function  of  actions  in 
equity  in  such  cases  is  to  restrain  future  infringements  of 
patents  by  means  of  the  writ  of  injunction.  In  every  case 
where  an  injunction  is  proper,  a  court  of  equity,  in  order 
to  avoid  a  multiplicity  of  actions,  will  take  an  account  of 
the  profits  which  the  defendant  derived  from  infringing  the 


Revised  Statutes,  Sections  629  and  4921;  Section  379  of  this  book. 


442  ACTIONS   IN    EQUITY.  [CHAP.  XX. 

complainant's  patent,  and  will  compel  the  defendant  to  pay 
their  amount  to  the  complainant.  And  equity  has  jurisdic- 
tion, independent  of  any  injunction  or  right  to  an  injunction, 
to  grant  this  relief  relevant  to  profits,  in  all  patent  cases 
wherein  some  impediment  prevents  a  resort  to  remedies 
purely  legal,  or  wherein  special  circumstances  render  the 
remedy  obtainable  by  an  action  at  law  difficult,  inadequate, 
or  incomplete.1 

§  573.  Wherever  equity  has  jurisdiction  to  decree  an 
account  of  the  defendant's  profits,  it  also  has  jurisdiction 
to  assess  the  damages  which  the  complainant  sustained  on 
account  of  the  defendant's  infringement.2  Having  ascer- 
tained the  amount  of  both,  if  the  profits  are  found  to  exceed 
the  damages,  the  court  will  enter  a  decree  for  their  recovery, 
and  will  do  nothing  further  about  the  damages.3  Where 
the  accounting  shows  no  such  profits,  but  does  show  such 
damages,  the. court  will  enter  a  decree  for  the  amount  of 
the  latter.4  Where  the  accounting  shows  both  profits  and 
damages,  and  shows  the  latter  to  equal  or  exceed  the  former, 
a  decree  will  be  entered  for  the  amount  of  the  damages,5  or 
for  any  sum  not  exceeding  three  times  that  amount.6 

In  assessing  damages,  equity  follows  the  law,7  and  is 
guided  by  the  rules  and  principles  which  are  set  forth  in 
Chapter  XIX.  of  this  book.  But  where  damages  are  meas- 
ured by  a  royalty,  only  the  earned  portion  of  the  royalty 
should  be  assessed ;  for  if  the  royalty  assessed  is  one  which 
covers  the  future  life  of  the  patent,  its  recovery  would 
authorize  a  continuance  of  the  defendant's  doings,  and  thus 


1  Root  v.  Railway  Co.  105  U.  S.  259,   1884;    Simpson   v.   Davis,   22 
189,  1881.  Fed.  Rep.  444,  1884. 

2  Revised  Statutes,  Section  4921.  6  Revised  Statutes,  Section  4919; 

3  Emigh  v.  Railroad  Co.  6  Fed.  Covert  v.  Sargent,  42  Fed.  Rep.  298 
Rep.  283  1881.  1890. 

4  Marsh  t>.  Seymour,  97  U.  S.  348,  7  Bancroft  t>.  Acton,  7  Blatch.  506, 
1877.  1870;  Locomotive  Safety  Truck  Co. 

5  Star  Salt  Caster  Co.  «.  Cross-  ».    Pennsylvania    Railroad    Co.    2 
man,   4  Bann.   &  Ard.   566,    1879;  Fed.  Rep.  682,  1880. 

Child  v.  Iron  Works,  19  Fed.  Rep. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  443 

defeat  an  injunction,  and  perhaps  oust  the  jurisdiction  of 
equity,  and  so  eventuate  in  a  reversal  of  the  decree  by  the 
Supreme  Court.1  •  . 

§  574.  The  complainant  in  an  action  in  equity  for  an 
infringement  of  a  patent,  may  be  the  holder  of  the  complete 
title  to  that  patent  in  the  territory  where  the  infringement 
occurred.  Where  the  legal  title  resides  in  one  person  and 
the  equitable  title  in  another,  both  should  generally  join 
in  such  an  action.8  But  the  holder  of  the  legal  title  may 
be  dispensed  with  as  co-complainant,  where  the  circum- 
stances of  the  case  are  such  that  a  decree  against  the  equi- 
table owner  would  clearly  be  pleadable  against  the  holder 
of  the  legal  title;3  and  the  holder  of  an  equitable  title  may 
be  dispensed  with,  where  his  interest  is  confined  to  a  share 
of  the  proceeds  of  the  patent.4  Where  an  equitable  owner 
brings  an  action  in  equity  in  the  name  of  the  holder  of  the 
legal  title  alone,  the  defendant  may,  by  means  of  a  motion 
to  the  court,  compel  the  equitable  owner  to  become  a 
co-complainant  in  his  own  name.5  But  where  a  defendant 
moves  to  make  a  stranger  to  a  suit  co-complainant  therein, 
on  the  ground  that  he  has  an  equitable  interest  in  the  mat- 
ter involved,  the  motion  will  be  overruled  if  the  'person, 
so  sought  to  be  brought  in,  files  in  the  case  a  disclaimer  of 
all  interest  in  the  subject  of  the  litigation.6 

§  575.  The  defendant  in  an  action  in  equity  for  an 
infringement  of  a  patent,  may  generally  be  any  person  or 
private  corporation  connected  with  that  infringement. 
Questions  relevant  to  the  liability  of  public  corporations  to 
such  actions,  and  relevant  to  the  respective  liability  of 
joint  infringers  when  sued  in  equity,  and  indeed  relevant  to 
numerous  points  in  the  subject  of  parties,  are  explained 


1  Bragg  v.   City  of  Stockton,  27  4  Rude  «.  Westcott,  130  U.  S.  152, 
Fed.  Rep.  509.  1886.  1889. 

2  Stimpson  v.   Rogers,  4  Blatch.  6  Patterson  v.   Stapler,   7.   Fed. 
336,  1859.  Rep.  210,  1881. 

8  Littlefleld  «.  Perry,  21  Wallace,  «  Graham  v.  Mfg.  Co.  11  Fed.  Rep. 

222,  1874.  148.  1880. 


444  ACTIONS    IN   EQUITY.  [CHAP.  XX- 

and  answered  in  the  chapter  on  courts,  parties  and  causes  : 
the  seventeenth  chapter  in  this  book. 

§,576.  An  original  bill  in  an  action  in  equity,  for  an 
infringement  of  a  patent,  properly  consists  of  six  parts  :  !• 
The  title  of  the  court.  2.  The  introduction.  3.  The  stat- 
ing part.  4.  The  prayer  for  relief.  5.  The  interrogating 
part.  6.  The  prayer  for  process.  Anciently  it  was  the 
custom  to  insert  in  all  original  bills  in  equity,  three  addi- 
tional parts :  the  confederacy  part,  the  charging  part,  and 
the  jurisdiction  part.  But  these  are  no  longer  required  in 
United  States  courts.1  The  confederacy  part,  if  used  when 
only  one  person  has  infringed  and  is  sued,  is  entirely  out  of 
place  ;  and  even  where  the  bill  is  filed  against  joint  infring- 
ers,  such  a  part  is  still  entirely  useless.  The  charging 
part  is  also  unnecessary,  because  the  complainant  is  entitled 
to  amend  his  bill,  if  the  answer  renders  it  necessary  for 
him  to  plead  specially  to  any  defence  it  contains.2  And 
such  a  part  is  objectionable,  because  it  notifies  the  defend- 
ant of  the  complainant's  reply  to  the  defendant's  defence, 
and  thus  enables  the  latter  to  concert  his  answer  with  more 
craftiness  than  he  otherwise  could.  And  the  jurisdiction 
part  is  useless,  because,  if  the  facts  stated  in  the  bill  do  not 
give  equity  jurisdiction,  the  fault  cannot  be  cured  by  alleg- 
ing that  they  do  ;  and  if  those  facts  do  lay  a  foundation  for 
j  urisdiction  in  equity,  they  will  speak  for  themselves,  and 
will  require  no  label  such  as  was  anciently  tacked  to  them 
in  the  form  of  a  jurisdiction  part.  That  part  of  an  ancient 
bill  in  equity  originated  in  England,  when  the  chancellors 
were  priests  and  not  lawyers,  and  when  they  therefore 
required  to  be  told  that  the  common  law  could  not  give  the 
relief  prayed  for  in  the  bill.  Some  pleaders  still  insert  one 
or  all  of  these  three  ancient  parts  in  a  bill  in  equity,  but 
neither  of  them  can  have  any  beneficial  effect  upon  the 
cause,  and  all  of  them  are  better  omited  than  used. 


1  Rules  of  Practice  for  the  Courts      Rule  21. 
of   Equity  of    the   United    States,          "  Equity  Rule  45. 


CHAP.  XX.]  ACTIONS    IN   EQUITY.  445 

§  577.  The  title  of  the  court,  at  the  beginning  of  a  bill, 
should  be  in  the  same  form  as  at  the  beginning  of  a  declar- 
ation.1 It  is  technically  unscientific  to  entitle  a  bill  in  the 
name  of  the  case,  because  until  the  bill  is  filed  there  is  no 
such  case  pending.  But  such  a  title  is  convenient,  in  order 
to  show  at  a  glance  who  are  the  parties  ;  and  convenience 
may  properly  outweigh  technical  nicety.  It  is  therefore 
exceptional  to  see  a  bill  that  is  not  entitled  in  the  name  of 
the  case. 

§  578.  The  form  of  the  introductory  part  is  prescribed  by 
the  Supreme  Court.2  It  contains  a  formal  address  to  the 
judges  of  the  court  in  which  the  bill  is  to  be  filed,  together 
with  the  names  and  the  citizenship  of  the  parties. 

§  579.  The  stating  part  of  a  bill  in  equity,  though  differ- 
ing in  form  from  the  statement  of  the  cause  of  action  in  a 
declaration  at  law,  agrees  with  the  latter  in  substance, 
except  in  the  following  particulars  :  It  may  be  based  upon  a 
fear  of  future  infringement,  where  the  fear  is  shown  in  the 
bill  to  be  well  founded.3  It  may  state  infringements  which 
were  committed  before  the  complainant  obtained  his  title, 
provided  that  title,  when  obtained,  covered  the  right  of 
action  for  those  infringements.  It  need  not  aver  that  any 
damage  was  incurred  by  the  complainant,  if  the  action  is 
brought  for  an  injunction  only,  or  for  an  injunction  and  an 
account  of  the  defendant's  profits.  Where  the  bill  prays 
for  a  preliminary  injunction,  its  stating  part  must  set  forth 
one  or  more  of .  the  grounds  for  that  relief,  which  are 
explained  in  the  chapter  on  injunctions.4  Where  profits  are 
sought  to  be  recovered,  it  must  plainly  aver  that  profits 
were  realized  by  the  defendant  on  account  of  the  stated 
infringement.5  And  where  a  former  decree  is  invoked 


1  Section  423  of  this  book.  1850;  American  Bell  Telephone  Co. 

2  Equity  Rule  20.  v.  Southern  Telephone  Co.  34  Fed. 

3  Canton  Steel    Roofing  Co.    v.  Rep.  803,  1888. 

Kanneberg,  51  Fed.  Rep.  599,  1892.  5  Wirt  v.  Hicks,  46  Fed.  Rep.  71, 

4  Parker  v.  Brant,  1   Fisher,  58,  1891. 


446  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

againstthedefendaiit.it  must  be  stated  in  the  bill,  according 
to  -the  rule  of  equity  pleading  in  that  behalf.1 

§  580.  The  prayer  for  relief  should  be  both  special  and 
general.2  The  special  part  should  ask  for  a  preliminary 
injunction,  and  for  a  permanent  injunction,  and  for  an 
account  of  the  defendant's  profits,  and  for  an  assessment  of 
the  complainant's  damages,  and  for  an  increase  of  those 
damages,  and  for  costs  ;  or  for  as  many  of  those  kinds  of 
relief  as  the  complainant  hopes  to  obtain  in  the  action. 
The  prayer  for  general  relief  should  be  in  the  ordinary 
form  of  prayers  of  that  kind. 

§  581.  The  form  of  the  interrogating  part  is  prescribed 
by  the  Supreme  Court.3  That  part  is  designed  and  adapted 
to  secure  from  the  defendant  such  admissions  or  statements 
as  will  obviate  the  necessity  for  evidence  to  support  those 
allegations  of  the  bill  which  relate  to  his  doings.4  The 
interrogatories  must  be  divided  from  each  other,  and  con- 
secutively numbered,  and  a  note  must  be  put  at  the  foot  of 
the  bill  specifying  which  of  those  numbered  interrogatories 
each  defendant  is  required  to  answer.5  Where  the  com- 
plainant in  his  bill  waives  the  oath  which  otherwise  the 
defendant  is  entitled  to  make  to  his  answer,  or  if  he 
requires  such  an  oath  to  be  made  only  to  the  answer  of 
certain  specified  interrogatories  ;  the  answer  of  the  defend- 
ant, though  it  is  in  fact  under  oath,  is  not  evidence  in  his 
favor  on  any  point  not  covered  by  such  specified  interrog- 
atories ;  unless  the  case  is  heard  on  bill  and  answer  only.6 

§  582.  The  prayer  for  process  must  contain  the  names  of 
all  the  defendants  who  are  mentioned  in  the  introductory 
part  of  the  bill,7  and  if  any  of  them  are  known  to  be  minors, 


1  Bradley  Mfg.  Co.  v.  Eagle  Mfg.  239,  1891. 

Co.  57  Fed.  Rep.  985,  1893.  5  Equity  Rules  41  and  42. 

2  Equity  Rule  21.  6  Equity  Rule  41. 

8  Equity  Rule  43,  7  Goebel  v.  Supply  Co.   55  Fed. 

<  Coop  v.  Physical  Institute,  47  Rep.  827,  1893. 
Fed.  Rep.  899,  1891;  48  Fed.  Rep. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  447 

or  otherwise  under  guardianship,  that  fact  must  be  stated 
in  the  prayer  for  process.1 

§  583.  The  bill  must  be  signed  by  counsel,  and  by  a 
solicitor  of  the  court  in  which  it  is  filed.2  But  if  the  attor- 
ney of  the  complainant  is  not  only  counsel  in  Federal 
courts  generally,  but  also  is  solicitor  in  the  particular  court 
in  which  the  bill  is  filed,  his  signature  will  suffice  in  both 
capacities. 

§  584.  An  oath  of  the  truth  of  the  bill  must  be  appended 
to  such  a  document,  if  it  prays  for  an  injunction.3  Such  an 
oath  is  to  be  made  by  the  complainant,  unless  he  is  in  such 
a  situation  as  to  be  unable  to  make  it,  in  which  case  it  may 
be  made  by  his  agent  conversant  with  the  facts.4  Where 
the  complainant  is  a  corporation,  the  bill  may  be  verified 
by  any  officer  of  the  corporation  who  knows  it  to  be  true  ; 
or  if  no  such  officer  possesses  that  knowledge,  it  may  be 
sworn  to  by  any  agent  or  attorney  who  does.5  Where  there 
is  a  plurality  of  complainants,  the  bill  may  be  sufficiently 
verified  by  the  oath  of  one  of  them.  If  the  bill  prays  for  a 
preliminary  injunction,  and  if  its  affiant  can  swear  only  on 
information  and  belief  to  the  defendant's  doings,  and  to  their 
character  as  infringements,  the  application  should  be  forti- 
fied by  affidavits  of  persons  who  know  what  the  defendant 
has  done,  and  by  affidavits  of  experts  who  can  intelligently 
testify  to  the  character  of  those  doings,  as  compared  with 
what  appears  to  be  covered  by  the  complainant's  patent. 
Where  the  complainant  can  positively  swear  to  part  of  the 
allegations  of  his  bill,  and  can  swear  to  the  residue  only  on 
information  and  belief,  the  bill  should  state  the  first  class  of 
facts  positively,  and  the  second  class  on  information  and 
belief  alone ;  and  the  oath  should  clearly  discriminate 
between  the  two  classes  in  that  behalf.  It  is  not  sufficient 
for  the  oath  to  state  that  the  material  averments  of  the  bill 

1  Equity  Rule  23.  bury  &  Minot.  124,  1847. 

*  Equity  Rule  24.  6  Bank  of  Orleans  v.  Skinner,  9 
3  Rogers  v.   Abbott,  4  Washing-      Paige  (N.  Y.),  805,  1841. 

ton,  514,  1825.  «Goodyear  v.  Allyn.  6  Blatch.  83, 

*  Woodworth  v.  Edwards, 3 Wood-      1868. 


448  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

are  true  ;  *  nor  to  state  that  those  allegations  are  true  which 
render  an  injunction  necessary  and  proper  ;2  because  such 
a  form  of  oath  leaves  it  uncertain  which  allegations  the 
affiant  had  in  mind.  But  positive  oaths  ought  to  be  based 
on  positive  knowledge.  It  is  much  to  be  feared  that  many 
persons  make  affidavits  to  bills  and  other  papers,  without 
sufficient  reflection  upon  the  statements  they  contain,  or 
upon  the  nature  of  an  oath,  or  upon  the  pains  and  penalties 
of  perjury.  The  fault  is  largely  due  to  the  attorneys  who 
write  the  papers.  The  better  lawyers  will  guard  the  con- 
science of  the  client  at  this  point,  while  the  inferior  ones 
are  sometimes  more  apt  to  mislead  than  to  protect  it.  Affi- 
davits to  bills,  and  indeed  all  other  affidavits  to  be  used  in 
any  civil  cause,  in  any  circuit  or  district  court  of  the  United 
States,  may  be  taken  before  a  commissioner  of  the  circuit 
court  for  the  district ; 3  or  before  any  notary  public  of 
either  of  the  States  or  Territories  or  of  the  District  of 
Columbia.4 

§  585.  A  bill  to  perpetuate  testimony  tending  to  show  a 
particular  patent  to  be  void,  may  be  filed  and  prosecuted  in 
any  United  States  Circuit  Court ; 5  but  a  bill  brought  into 
court  to  establish  non-infringement  of  a  particular  patent 
by  the  complainant  will  not  be  entertained.6  Nor  will  a  bill 
in  equity  lie  to  restrain  an  action  at  law  brought,  or  to  be 
brought,  for  infringement  of  a  patent.7 

Several  bills  have  been  filed,  and  other  proceedings  insti- 
tuted in  equity,  to  restrain  patentees  from  publishing  state- 
ments favorable  to  their  patents,  and  unfavorable  to  alleged 
infringers  thereof,  and  in  other  cases  to  restrain  alleged 


1  Sauvinet  ®.  Poupono.  14  Louisi-  ishing  Co.  •».  New  York  Coffee  Pol- 
ana,  87,  1839.  ishing  Co.  9  Fed.  Rep.  578,  1881,  11 

2  Hebert  v.  Joly,  5  Louisiana,  50,  Fed.  Rep.  813,  1882. 

1832.  «  Celluloid  Mfg.  Co.  v.  Vulcanite 

3  Revised  Statutes,  Section  945.  Co.  13  Blatch.  375,  1876;  Strait  •». 

4  19  Statutes  at  Large,  Ch.  304,  Harrow  Co.  51  Fed.  Rep.  819, 1892. 
p.  206.  7  Germain®.  Wilgus,  67  Fed.  Rep. 

5  Revised  Statutes,  Section.  866  ;  601,  1895. 
New  York  &  Baltimore  Coffee  Pol- 


CHAP.  XX.]  ACTIONS  IN   EQUITY.  449 

inf ringers  of  patents  from  publishing  statements  unfavorable 
to  those  patents,  and  favorable  to  such  alleged  infringers  ; 
and  several  inharmonious  decisions  have  been  made  in  such 
cases.1  But  any  Federal  court  that  issues  an  injunction  to 
restrain  a  person  from  publishing  such  a  statement,  will  be 
exercising,  without  statutory  authority,  a  power  which  the 
constitution  prohibits  Congress  to  provide  for  by  statute.2 
Such  a  law  would  plainly  abridge  the  freedom  of  the  press, 
and  if  Congress  were  to  make  such  a  law,  the  Federal  courts 
would  have  no  lawful  power  to  administer  it,  because  it 
would  be  clearly  unconstitutional ;  and  it  is  certain  that 
those  courts  cannot  lawfully  exercise  the  double  function  of 
making  and  administering  an  unconstitutional  law.  And 
moreover  equity  has  no  jurisdiction  to  restrain  citizens  from 
publishing  false  statements  about  other  citizens  or  their 
rights ;  because  the  persons  thus  injured  have  adequate 
remedies  at  law  for  their  injuries.3 

§  586.  Amendments  to  bills  may  be  made  as  a  matter  of 
course,  and  without  costs,  at  any  time  before  a  copy  has 
been  taken  out  of  the  clerk's  office ;  and  may  be  made  as  of 
course  with  costs,  after  a  copy  has  been  taken  out,  and 
before  any  plea  answer,  or  demurrer  has  been  filed.4  After 
an  answer  or  plea,  or  demurrer  is  put  in,  and  before  replica- 
tion, the  complainant  may,  upon  motion  without  notice, 
obtain  an  order  from  any  judge  of  the  court  to  amend  his 
bill  on  or  before  the  next  succeeding  rule  day,  upon  pay- 
ment of  costs,  or  without  payment  of  costs,  as  the  judge 


1  Chase  v.  Tuttle,  27  Fed.  Rep.  Fougeres  v.  Murbarger,  44  Fed. 
110,  1886;  Tuttle  ®.  Matthews,  28  Rep.  292, 1890;  International  Tooth- 
Fed.  Rep.  98,  1886;  Kidd  «.  Horry,  Crown  Co.  «.  Carmichael,  44  Fed. 
28  Fed.  Rep.  773,  1886:  Baltimore  Rep.  350,  1890;  New  York  Filter 
Car-Wheel  Co.  v.  Bemis,  29  Fed.  Co.  v.  Schwarzwalder,  58  Fed.  Rep. 
Rep.  95,  1886;  Ide  v.  Engine  Co.  31  577,  1893. 

Fed.  Rep.  901,  1887;  Curran  v.  Car  2  First  Amendment  to  the  Con- 
Co.  32  Fed.  Rep.  835,  1887;  Emack  stitution. 

v.  Kane,  34  Fed.  Rep.  46,   1888 ;  8  Francis  v.  Flinn,  118  U.  8.  385, 

Flint  v.  Smoke  Burner  Co.  38  Fed.  1886. 

Rep.  546,  1889;  Kelley  «.  Ypsilanti  «  Equity  Rule  28. 
Mfg.  Co.  44  Fed.  Rep.   19,  1890; 


450  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

may  in  his  discretion  direct.1  After  a  replication  is  filed, 
and  before  the  hearing  of  the  case,  the  bill  cannot  be 
amended  except  upon  a  special  order  of  a  judge  of  the 
court,  upon  motion  or  petition,  after  due  notice  to  the  other 
party,  and  upon  proof  by  affidavit  that  the  application  is 
not  made  for  the  purpose  of  vexation  or  delay,  and  that  the 
matter  of  the  proposed  amendment  is  material,  and  could 
not  with  reasonable  diligence  have  sooner  been  introduced 
into  the  bill,  and  upon  the  plaintiff  submitting  to  such 
other  terms  as  may  be  imposed  by  the  judge  for  speeding 
the  cause.*  Amendments  applied  for  at  or  after  the  hear- 
ing of  a  case,  are  not  regulated  by  the  Equity  .Rules,  but  are 
allowed  or  refused,  according  to  the  sound  discretion  of 
the  court.3  But  that  discretion  is  governed  by  precedents, 
and  those  precedents  indicate  that  amendments,  at  or  after 
the  hearing,  will  be  allowed  only  where  the  bill  is  found  to 
be  defective  in  proper  parties,  or  in  its  prayer  for  relief,  or 
in  the  omission  or  misstatement  of  some  fact  or  circum- 
stance connected  with  the  substance  of  the  case,  but  not 
forming  the  substance  itself,  or  where  it  is  necessary  for  the 
complainant  to  take  issue  with  new  matter  in  the  answer.4 
Where  a  litigation  has  been  conducted  precisely  as  it  would 
have  been  if  the  proper  amendment  had  been  made  before 
any  plea,  answer,  or  demurrer  was  filed  ;  the  court  will  allow 
that  amendment  to  be  filed  even  after  the  hearing,  and  thus 
make  the  pleadings  conform  to  what  the  course  of  the  liti- 
gation assumed  them  to  be.5 

§  587.  A  bill  needs  amendment  when  the  defendant's 
demurrer,  plea,  or  answer  points  out  a  material  fault  therein, 
or  when  the  complainant  otherwise  discovers  a  material 
error  or  omission  which  may  be  cured,  or  when  the  defend- 


1  Equity  Rule  29.  lace,  527,  1874;  Vattier  «.  Hinde,  7 

2  Equity  Rule  29.  Peters,  273,  1833;  Duponti  v.  Mus- 
3Neale  «.   Neals,   9  Wallace,  9,  sy,  4  Washington,   128,1821;  New 

1869.  York  Sugar  Co.   0.    Sugar  Co.    20 

4  Shields  v.  Barrow,  17  Howard,  Fed.   Rep.    505,    1884;  New  Depar- 
144,  1854.  ture  Bell  Co.  v.  Bevin  Mfg.  Co.  64 

5  The  Tremolo  Patent,  23  Wai-  Fed.  Rep.  866,  1894. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  451 

ant's  plea  or  answer  contains  statements  to  which  it  is  nec- 
essary to  plead  by  way  of  confession  and  avoidance.1  No 
reply  by  way  of  confession  and  avoidance  can  be  made  in 
a  replication  in  equity.2  Where  the  plea  or  answer  sets  up 
new  matter,  to  which  the  complainant  wishes  to  reply  by 
way  of  traverse,  the  general  replication  is  the  proper  plead- 
ing to  file  for  that  purpose.3 

§  588.  Defences  may  be  made  to  a  bill  in  equity  for 
infringement  of  a  patent,  by  a  demurrer,  or  by  a  plea,  or  by 
an  answer ;  or  by  a  demurrer  to  part,  and  a  plea  to  another 
part,  and  an  answer  to  the  residue  ;4  or  by  a  demurrer  to 
part,  and  a  plea  to  the  residue  ;  or  by  a  demurrer  to  a  part, 
and  an  answer  to  the  residue  ;  or  by  a  plea  to  a  part,  and  an 
answer  to  the  residue.5 

The  nature  and  operation  of  demurrers  and  answers  in 
equity  practice,  are  so  well  understood  by  the  profession, 
that  nothing  need  be  said  about  them  in  this  book,  further 
than  to  show  the  applicability  of  each  of  those  forms  of 
pleading  to  the  various  defences  which  belong  to  patent  liti- 
gation. But  defences  by  plea  may  bear  a  lorger  review 
because  they  have  largely  gone  out  of  use  in  the  Federal 
courts  and  their  principles  been  partly  forgotten  by  the 
members  of  the  bar,  since  the  Equity  Rules  authorized 
nearly  every  defence  to  be  made  in  an  answer,  that  formerly 
required  a  plea  for  its  interposition.6  But  those  rules  do 
not  authorize  any  defendant  to  make  a  particular  defence 
in  a  plea,  and  if  unsuccessful  there,  to  make  it  over  again  in 
an  answer.7  Such  a  plan,  if  allowed,  would  enable  a 
defendant  whose  plea  is  overruled  as  stating  no  defence  at 
law,  to  argue  that  question  again  on  the  final  hearing ;  and 
it  would  enable  a  defendant,  whose  plea  is  proved  to  be 
false  in  fact,  to  contest  that  issue  again  on  new  testimony 
taken  in  pursuance  of  an  answer.  Though  pleas  in  bar  are 

1  Wilson  v.   Stolley,  4  McLean,          6  Story's  Equity  Pleading,   Sec- 
275  1847.  tion  437. 

2  Equity  Rule  45.  6  Equity  Rule  39. 

8  Equity  Rule  66.  7  Hubbell  v.    De   Land,  14  Fed. 

4  Equity  Rule  82.  Rep.  475,  1882. 


452  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

not  necessary  in  equity  cases  in  the  Federal  courts,  except 
under  rare  circumstances,  they  may  sometimes  be  made 
useful  in  saving  time,  labor,  costs,  and  expense.  It  is,  on 
these  accounts,  expedient  to  remind  the  reader  of  the  gen- 
eral nature  and  operation  of  those  pleadings,  before 
explaining  their  special  application  to  actions  in  equity  for 
infringements  of  patents. 

§  589.  A  plea  in  equity  is  a  sworn  J  pleading,  which  alleges 
that  some  one  fact,  not  stated  in  the  bill,  is  true ;  or  that 
some  one  statement  of  fact  in  the  bill,  is  not  true  ;  or  that 
some  one  fact,  which  the  bill  states  is  not  a  fact,  is  a  fact 
nevertheless.  A  plea  of  the  first  kind  sets  up  new  matter 
by  way  of  confession  and  avoidance,  and  is  properly  named 
an  affirmative  plea.2  This  is  the  only  sort  of  plea  in  equity 
which  was  recognized  in  the  time  of  Chancellor  BACON. 3 
A  plea  of  the  second  kind  traverses  some  one  statement  of 
fact  in  the  bill,  and  is  therefore  properly  called  a  negative 
plea.4  This  sort  of  plea  was  established  by  Chancellor 
TITURLOW,  and  thereafter  became  a  fully  recognized  part  of 
equity  pleading  in  England  and  in  the  United  States.5  A 
plea  of  the  third  kind  states  some  fact  to  be  true  which  the 
bill  seeks  to  impeach.6  It  is  similar  to  an  affirmative  plea 
in.  respect  that  it  sets  up  matter  outside  of  that  upon  which 
the  bill  is  based  ;  and  it  is  similar  to  a  negative  plea,  in  that 
it  contradicts  some  one  statement  of  fact  in  the  bill.  It 
may  therefore  be  properly  named  a  composite  plea.  Where 
the  single  point  of  fact  stated  or  denied  in  a  plea,  depends 
for  its  truth  or  error  upon  the  comparative  construction  of 
two  documents,  the  plea  is  bad  and  must  be  overruled  ; 
because  such  a  question  of  construction  is  a  question  of  law.7 


1  Equity  Rule  31.  6  Story's  Equity  Pleading,   Sec- 

2  DanielPs    Chancery    Practice,  tion  668. 

Vol,  1.  Chap.  XV,  Section  1.  "  Daniell's    Chancery   Practice, 

3  Beame's  General  Orders  of  the  Vol.  1,  Chap.  XV,  Section  1. 
High  Court  of  Chancery,  26.  '  Lowrey    t>.  Aluminum  Co.   56 

4  Daniell's    Chancery    Practice,  Fed.    Rep.    495,  1893. 
Vol.  1,  Chap.  XV,  Section  1. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  453 

§  590.  After  a  defendant  files  a  plea  to  a  bill  in  equity, 
the  complainant  should  satisfy  himself  whether  it  states  a 
good  defence  to  the  bill,  or  to  that  part  of  the  bill  to  which 
it  refers,  and  should  ascertain  whether  it  is  true  in  point  of 
fact.  If  he  is  sure  that  he  can  prove  it  to  be  false,  he  should 
take  issue  upon  it1  by  filing  a  replication.2  If  he  has  any 
ground  for  fear  that  the  plea  is  true  in  fact,  and  any  ground 
for  hope  that  it  is  bad  in  law,  his  true  course  is  to  set  the 
plea  down  for  argument ;  3  which  setting  down  is  equivalent 
to  a  demurrer  to  the  plea.4  If,  on  the  argument,  the  plea 
is  held  to  state  no  fact  which  constitutes  a  defence  to  the 
bill,  or  to  any  part  thereof,  it  will  be  overruled,  and  the 
defendant  will  be  permitted  to  file  an  answer  setting  up 
whatever  other  defences  he  can.5  But  if  the  plea  is  held  on 
the  argument  to  state  a  good  defence  to  the  bill,  or  to  that 
part  of  the  bill  to  which  it  applies,  it  will  be  allowed,  and 
thereupon  the  complainant  may  ask  leave  to  amend  his 
bill ; 6  or  if  he  cannot  truly  amend  it  so  as  to  make  it  avoid 
the  plea,  he  must  file  a  replication.7  Thereupon,  if  the  plea 
is  proved  to  be  true,  the  fact  thus  established  will  avail  the 
defendant,  as  far  as,  in  law  and  equity,  it  ought  to  avail 
him  ; 8  and  if  the  plea  is  proved  to  be  false,  the  defendant 
must  file  an  answer  to  the  bill.9  Only  one  defence  can 
be  made  to  a  bill  in  a  plea,  unless  the  court,  in  order  to 
avoid  a  special  inconvenience,  gives  a  special  permission  to 
a  defendant  to  make  a  plurality  of  defences  in  that  method 


1  Equity  Rule  83.  tion  697;  Daniell's  Chancery  Prac- 

aDaniell's     Chancery    Practice,  tice,  Vol.  1,  Ch.  XV.  Section  V. 
Vol.  1,  Ch.  XV.  Section  V.  8  Pearce  ».   Rice,  142  U.  S.  42, 

8  Equity  Rule  33.  1891;  Horn  v.  Detroit  Co.  150  U.  S. 

4  Davison's  Ex'rs  v.  Johnson,  16  610,  1893;  Green  v.  Bogue,  158  U. 

New  Jersey  Equity,  113,  1863;  Korn  S.  500,  1895;  Elgin  Wind  Power  Co. 

v.  Wiebusch,  33  Fed  Rep.  51,  1887;  v.  Nichols,  65  Fed.  Rep.  218,  1894; 

Burrell  v.  Hackley,  35  Fed.  Rep.  American  Graphophone  Co.  v.  Edi- 

834,  1888.  son    Phonograph   Works,  72    Off. 

6  Equity  Rule  34.  Gaz.  1350,  1895. 

6  Edison  Electric  Light  Co.fl.Equi-          9  Dalzell  v.  Dueber  Mfg.  Co.  149 
table  Life  Co.  55  Fed.  Rep.  481, 1893.  U.  S.  326,  1893. 

7  Story's  Equity  Pleading,   Sec- 


454  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

of  pleading.1  With  that  exception,  after  any  plea  has  been 
overruled,  the  defendant,  if  he  has  other  defences  to  inter- 
pose, must  interpose  them  in  an  answer.2  This  outline  of 
the  principles  of  pleas  in  equity  should  be  kept  in  mind  by 
the  reader  while  perusing  sundry  of  the  sections  which 
follow. 

§  591.  The  twenty-seven  defences  which  may  be  made  to 
actions  at  law  for  infringements  of  patents,3  may  all  be  made 
to  actions  in  equity  based  on  such  causes  ;  and  the  latter 
actions  are  also  liable  to  two  other  defences,  to  which  actions 
at  law  are  not  subject.  These  are  non-jurisdiction  of  equity, 
and  laches.  Jt  is  convenient  first  to  explain  the  facts  which 
may  support  each  of  these  two  defences,  and  then  state  the 
various  methods  in  which  each  may  be  interposed,  and 
afterward  to  review  the  twenty-seven  defences  in  their  order, 
and  to  explain  wherein  any  of  them  differ  in  their  operation 
in  equity,  from  their  operation  at  law,  and  to  state  what 
forms  of  pleading  are  suitable  to  each,  under  the  varying 
circumstances  of  patent  litigation. 

§  592.  Non-jurisdiction  in  equity  is  a  defence  which  will 
succeed  in  any  infringement  case,  unless  an  injunction  is 
granted,  or  at  least  rightfully  prayed  for  in  that  case,  or 
unless  some  impediment  prevents  a  resort  to  remedies  purely 
legal,  or  unless  the  circumstances  of  the  case  render  the 
remedy  obtainable  by  an  action  at  law,  difficult,  inadequate, 
or  incomplete.4  Equity  jurisdiction  is  therefore  absent 
where  the  patent  expired  before  the  bill  is  filed,5  or  where 
the  complainant  has  no  ownership  in  the  patent  at  that 
time.6 


1  Story's  Equity  Pleading,    Sec-  3  Section  440  of  this  book 

tion  657;  Wheeler  v.  McCormick,  4  Root  «.  Railroad  Co.  105  U.  8. 

8  Blatch.  267,  1871;  Noyes  v.  Wil-  189,  1881. 

lard.   1    Woods,    187,    1871;  Giant  5  Root  „.  Railroad  Co.  105  U.  S. 

Powder  Co.  v.  Nitro  Powder  Co.  19  189,  1881. 

Fed.  Rep  510,  1884.  6  Waterman  v.  Mackenzie,  138  U. 

2  Equity  Rule  34.              .  S.  257, 1891. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  455 

But  where  a  bill  is  filed  before  the  expiration  of  the 
patent  upon  which  it  is  based,  and  where  it  truly  states  a 
proper  case  for  an  injunction,  and  contains  a  proper  prayer 
for  that  relief,  equity  has  jurisdiction,  and  should  retain  it 
to  the  end  of  the  suit,  even  if,  on  account  of  the  expiration 
of  the  patent  before  a  hearing  is  had,1  or  on  account  of  the 
sale  of  the  patent  by  the  complainant  before  a  hearing  is 
obtained,2  or  on  account  of  public  policy,3  or  on  account  of 
the  complainant's  delay  to  move,4  no  injunction  is  ever 
granted  in  the  case. 

But  where  a  bill  untruly  states  a  proper  case  for  an  injunc- 
tion, and  contains  a  prayer  for  that  relief,  the  jurisdiction 
of  equity  will  lapse  and  the  bill  be  dismissed,  whenever  it  is 
shown  to  have  been  untrue  in  respect  of  those  of  its  state- 
ments upon  which  the  prayer  for  an  injunction  is  based.5 
And  where  a  bill  states  no  proper  case  for  an  injunction, 
but  contains  a  prayer  for  such  a  writ,  the  jurisdiction  of 
equity  will  not  attach  at  all,  and  the  bill  be  dismissed  when- 
ever its  character  is  brought  to  the  attention  of  the  court.6 
And  where  a  bill  is  filed  so  shortly  before  the  expiration  of 
the  patent  upon  which  it  is  based,  that  no  motion  for  an 
injunction  can  be  regularly  notified  to  the  defendant  and 
heard  by  the  court  till  after  that  expiration,  the  bill  will  be 
dismissed  whenever  the  court  learns  that  no  injunction  can 

1  Clark  v.  Wooster,  119  U.  S.  325,  1887;  Hohorst  v.  Howard,  37  Fed. 

1886;  Beedle  v.  Bennett,  122  U.  S.  Rep.  97,  1888;  Singer  Mfg.  Co.  t>. 

75,  1886;  Gottfried  v.  Brewing  Co.  Wilson  Mach.  Co.  38  Fed.  Rep.  587. 

13  Fed.  Rep.  479,  1882;  Gottfried  «.  1889. 

Moerlein,  14  Fed.   Rep.  170,  1882;  2  New  York  Belting  Co.  v.  New 

Forehand  v>.  Porter,  15  Fed.  Rep.  Jersey  Car-Spring  Co.  47  Fed.  Rep. 

256,  1883;  Reay  v.  Raynor,  19  Fed.  505,  1891;  48  Fed.  Rep.  559,  1891. 

Rep.  309,  1884;  Adams  v.  Howard,  8  Bragg  Mfg.  Co.  v.  Hartford,  56 

19  Fed.  Rep.    317,   1884;   Dick  v.  Fed.  Rep.  293,  1893. 

Struthers,  25  Fed.  Rep.  103,  1885;  4  Waite  «  Chair  Co.  45  Fed.  Rep. 

Adams  «.  Iron  Co.   26  Fed.  Rep.  259,  1891. 

324,1886;  Kirk  v.  DuBois,  28  Fed.  6Dowell  v.  Mitchell,   105  U.  8. 

Rep.  460,  1886;    Brooks  v.  Miller,  430,  1881. 

28  Fed.  Rep.  615,  1886;  Kittle  v.  6  Campbell  v.  Ward,  12  Fed.  Rep. 

De  Graff,  30  Fed.  Rep.  689,  1887;  150,  1882;  Creamer  v.  Bowers,  80 

Kittle  ».  Rogers,  33  Fed.  Rep.  49,  Fed.  Rep.  185, 1887. 


456  ACTIONS   IN    EQUITY.  [CHAP.  XX. 

be  lawfully  granted.1  And  if  no  injunction  is  granted,  and 
if  the  Circuit  Court  does  dismiss  the  bill  for  want  of  equity, 
in  the  absence  of  a  right  to  an  injunction  at  the  time  of 
the  hearing,  such  dismissal  will  not  be  reversed  on  an 
appeal.2 

§  593.  The  case  of  Root  v.  Railway  Co.  omitted  to  clearly 
state  what  exceptional  facts  will  give  equity  jurisdiction, 
independent  of  any  injunction  or  prayer  for  injunction. 
What  the  court  said  on  that  subject  was  said  in  the  follow- 
ing phraseology  :  "  Grounds  of  equitable  relief  may  arise, 
other  than  by  way  of  injunction,  as  where  the  title  of  the 
complainant  is  equitable  merely,  or  equitable  interposition 
is  necessary  on  account  of  the  impediments  which  prevent 
a  resort  to  remedies  purely  legal ;  and  such  an  equity  may 
arise  out  of,  and  inhere  in,  the  nature  of  the  account  itself, 
springing  from  special  and  peculiar  circumstances  which 
disable  the  patentee  from  a  recovery  at  law  altogether,  or 
render  his  remedy  in  a  legal  tribunal  difficult,  inadequate, 
and  incomplete  ;  and  as  such  cases  cannot  be  denned  more 
exactly,  each  must  rest  upon  its  own  peculiar  circumstances, 
as  furnishing  a  clear  and  satisfactory  ground  of  exception 
from  the  general  rule."  Before  this  case  was  a  year  old,  the 
same  justice  who  delivered  the  opinion  of  the  Supreme 
Court  was  called  upon  to  deliver  another  in  explanation 
thereof.3  In  the  latter  case  it  was  held  that  grounds  of 
equitable  relief  do  not  arise  "where  the  title  of  the  com- 
plainant is  equitable  merely,"  unless  that  fact  constitutes  an 
impediment  to  a  resort  to  remedies  purely  legal,  or  consti- 
tutes a  circumstance  which  renders  the  remedy  obtainable  by 
an  action  at  law  difficult,  inadequate,  or  incomplete.  And 
Judge  COLT  has  decided  that  such  an  equity  does  not  "arise 

1  Clark  «.  Wooster,  119  U.  S.  324,  Bragg  Mfg.  Co.  v.  Hartford,  56  Fed. 

1886;  Burdell  v.  Comstock,  15  Fed.  Rep.  293,  1893. 

Rep.  395,  1883;  Davis  v.  Smith,  19  2  Keyes  v.  Mining  Co.  158  U.  S. 

Fed.   Rep.   823.   1884;  Mershon  v.  152,  1895;  Russell  «.  Kern.  72  Off. 

Furnace  Co.  24  Fed.  Rep.  741,  1885;  Gaz.  590, 1895. 

American  Cable  Ry.  Co.  v.  Chicago  3  Hayward  v.  Andrews,  106  U.  8. 

City  Ry.  Co.  41  Fed.  Rep.  522, 1890;  672,  188?. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  457 

out  of,  and  inhere  in,  the  nature  of  the  account  itself" 
merely  because  the  account  is  intricate.1 

§  594.  Want  of  jurisdiction  in  equity  may  be  set  up  by 
a  defendant  in  a  demurrer  or  in  an  answer.  But  it  cannot 
be  interposed  without  any  pleading  to  sustain  it ; 2  except 
where  the  bill  shows  that  it  was  filed  after  the  patent 
expired.  In  that  case,  non-jurisdiction  may  be  invoked  by 
a  motion  at  any  stage  of  the  case  in  the  circuit  court.3 
There  is  an  advantage  in  making  this  defence  by  demurrer 
instead  of  by  answer,  or  by  motion  after  an  answer ;  for  in 
the  first  case  the  bill  may  be  dismissed  with  costs,  while  in 
either  of  the  others  no  costs  can  be  recovered,  even  if  the 
defence  is  successful.4 

§  595.  Prior  adjudication  in  an  action  at  law  is  not 
necessary  to  give  jurisdiction  to  equity  in  cases  of  infringe- 
ments of  patents,  nor  is  such  an  adjudication  necessary  to 
call  equity  into  activity  in  that  behalf.5  A  circuit  court 
may,  in  its  discretion,  order  a  trial  at  law  in  such  a  case,6 
or  order  a  trial  by  jury  at  its  own  bar,7  in  order  to  inform 
the  conscience  of  the  chancellor ;  but  no  such  trial  can  be 
demanded  by  either  or  both  of  the  parties  as  an  absolute 
right,  for  courts  of  equity  are  not  only  really,  but  also  tech- 
nically, competent  to  judge  of  questions  of  facts.8 

§  596.  Laches  is  a  defence  which  is  peculiar  to  courts  of 
equity.  "  The  cases  are  many  in  which  this  defence  has  been 
invoked  and  considered.  It  is  true,  that  by  reason  of  their 
differences  of  fact,  no  one  case  becomes  an  exact  precedent 
for  another,  yet  a  uniform  principle  pervades  them  all. 
They  proceed  on  the  assumption  that  the  party  to  whom 

1  Lord  v.  Machine  Co.  24  Fed.      180,  1882. 

Rep.  803,  1885;  Adams  v.  Iron  Co.  5  McCoy  v.  Nelson,  121  U.  S.  487, 

26    Fed.    Rep.    325,   1886.  1887. 

2  Reynes  v.   Dumont,  130  U.    S.  6  Wise  V.  Railway  Co.   33  Fed. 
395,    1889;    Tyler   v.   Savage,    143  Rep.  277,  1888. 

U.  8.    96,  1892;  Dederick  v.  Fox,  7  18  Statutes  at  Large,  Part  8, 

56   Fed.  Rep.  717, 1893.  Chap.  77,  Section  2,  p.  316. 

3  Spring  v.  Sewing  Machine  Co.  13  8  Cochrane  v.   Deener,  94  U.  8. 
Fed.  Rep.  446,  1882.  780,  1876. 

4  Dawes  v.  Taylor,  14  Reporter, 


458  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

laches  is  imputed,  has  knowledge  of  his  rights,  and  an  ample 
opportunity  to  establish  them  in  the  proper  forum  ;  that  by 
reason  of  his  delay  the  adverse  party  has  good  reason  to 
believe  that  the  alleged  rights  are  worthless,  or  have  been 
abandoned ;  and  that  because  of  the  change  in  condition 
or  relations  during  this  period  of  delay,  it  would  be  an 
injustice  to  the  latter  to  permit  the  former  to  now  assert 
them."1  "  The  length  of  time  during  which  the  party  neg- 
lects the  assertion  of  his  rights,  which  must  pass  in  order 
to  show  laches,  varies  with  the  peculiar  circumstances  of 
each  case,  and  is  not,  like  the  matter  of  limitations,  subject 
to  an  arbitrary  rule.  It  is  an  equitable  defence,  controlled 
by  equitable  considerations,  and  the  lapse  of  time  must  be 
so  great,  and  the  relations  of  the  defendant  to  the  rights  such, 
that  it  would  be  inequitable  to  permit  the  plaintiff  to 
assert  them  now." 8  In  pursuance  of  these  principles, 
courts  of  equity  sometimes  dismiss  bills  for  infringements 
of  patents,  because  they  were  not  filed  with  diligence,3  or 
not  prosecuted  with  diligence  after  they  were  filed  ; 4  and 
whether  the  complainant  or  his  assignor  is  the  party  who  is 
chargeable  with  laches.5  But  delay  to  sue  is  not  always, 
laches,  because  it  may  have  resulted  from  the  fact  that  the 
complainant  did  not  know  of  the  infringement  till  long 
after  it  began ;  or  from  the  fact  that  he  was  litigating  a  test 
case  under  his  patent  against  another  infringer  during  the 
time  of  the  delay ; 6  or  it  may  have  occurred  after  the 

1  Galliher  «.  Cadwell,  145  U.   8.          5  Kittle  v.  Hall,  39  Fed.  Rep.  511, 
372,  1892.  1887;  Woodmanse  &  Hewitt  Co.  v. 

2  Halstead  v.  Grinnan,  152  U.  S.  Williams,  68  Fed.  Rep.  492,  1895. 
416,  1894.  «  Van  Hook  s.Pendleton,!  Blatch. 

8  Lane  &  Bodley  Co.  v.  Lock,  150  193,  1846;  Green  «.  French,  4  Bann. 

U.S.  200,  1893;  New  York  Grape  &  Ard.  171,  1879;  Green  v.  Barney, 

Sugar  Co.  v.  Buffalo  Grape  Sugar  19  Fed.  Rep.  421,  1884;  American 

Co.  24  Fed.  Rep.  604.  1885;  Edison  Bell  Telephone  Co.  v.  Southern 

Electric  Light  Co.  v.  Equitable  Life  Telephone  Co.  34  Fed.  Rep.  802, 

Co.  55  Fed.  Rep.  479,  1893;  Fosdick  1888;  Edison  Electric  Light  Co.  v. 

v.  Lowell  Machine  Shop,  58  Fed.  Mt.  Morris  Electric  Light  Co.  57 

Rep.  817,  1893.'  Fed.  Rep.  644.  1893;  Norton  t>. 

4  Johnston  v.  Mining  Co.  148  U.  Automatic  Can  Co.  57  Fed.  Rep. 

S.  370,  1892.  932,1893 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  459 

infringer  was  warned  to  infringe  no  more,  and  while  the 
patentee  was  preparing  for  action.1  The  first  of  these  cir- 
cumstances excuses  delay,  because  vigilance  does  not  imply 
omniscience  ;  and  the  second  excuses  delay  because  abstin- 
ence from  vexatious  litigation  is  worthy  to  be  praised  rather 
than  punished  by  a  court  of  equity  ;  and  the  third  excuses 
delay  because  it  is  neglect,  and  not  patience,  that  constitutes 
laches. 

§  597.  The  defence  of  laches  can  be  made  in  a  demurrer,2 
or  in  a  plea,3  or  in  an  answer,  or  in  an  argument  on  the 
hearing  without  any  pleading  to  support  it.4 

To  guard  against  a  demurrer  based  on  laches,  in  a  case 
where  long  delay  intervened  between  the  infringement  and 
the  filing  of  the  bill,  the  bill  ought  to  state  the  existing 
excuses  for  that  delay ; 5  and  to  guard  against  such  a 
defence  being  started  on  the  hearing,  the  evidence  ought  to 
show  whatever  excuse  the  complainant  can  interpose. 

§  598.  The  first  of  the  twenty-seven  defences  which  are 
known  both  to  actions  at  law  and  actions  in  equity  for 
infringements  of  patents,  can  be  made  in  a  demurrer,  where 
the  letters  patent  appear  on  their  face  to  have  been  granted 
for  something  other  than  a  process,  machine,  manufacture, 
composition  of  matter,  or  design.6  And  indeed  any  defence 
which  can  be  based  upon  the  face  of  the  patent  can  be 
made  by  demurrer.7  But  a  plea  is  never  applicable  to  the 
first  defence,  because  its  validity  depends  upon  the  construc- 
tion of  the  letters  patent,  and  not  upon  any  matter  of  fact  to 
which  an  oath  would  be  pertinent,  though  an  answer  is 
always  applicable  thereto,  and  may  join  it  with  other 
defences  to  a  patent. 

1  Seibert  Oil  Cup  Co.  ®.  Lubrica-  Mfg.  Co.  v.  Williams,  68  Fed.  Rep. 
tor  Co.  34  Fed.  Rep.  34,  1888.  494,  1895. 

2  Maxwell  v.  Kennedy,  8  Howard,  5  Edison  Electric    Light  Co.   v. 
222,  1850.  Equitable  Life  Co  55  Fed.  Rep.  481, 

3  Edison  Electric    Light  Co.  «.       1893. 

Equitable  Life  Co.   55  Fed.  Rep.  «  Risdon  Locomotive   Works  t>. 

479,  1893.  Medart,  158  U.  8.  84,  1895. 

4  Sullivan  v.  Railroad  Co.  94  U.  7  Richards  «.  Chase  Elevator  Co. 
S.  811,  1876;  Woodmanse  &  Hewitt  158  U.  S.  301,  1895. 


460 


ACTIONS   IN   EQUITY. 


[CHAP.  XX. 


§  599  The  second  defence  may  be  made  on  the  hearing, 
without  any  pleading  or  evidence,  in  all  cases  where  the 
court  will  take  judicial  notice  of  the  fact  which  shows  want 
of  invention  ; l  and  a  demurrer  will  also  be  sustained  in 
the  same  circumstances.2  But  courts  will  not  take  judicial 
notice  of  a  fact,  merely  because  it  is  stated  in  a  book,3  or  in 
a  prior  patent  ;4  nor  of  any  fact  which  is  not  generally 
known,5  even  though  known  to  the  judges  ;6  nor  of  any  fact, 
the  reality  of  which  is  subject  to  doubt.7  And  a  demurrer 
for  want  of  invention  will  be  overruled  except  in  a  clear 
case.8  Where  the  state  of  the  prior  art  must  be  proved  by 
evidence,  in  order  to  show  that  the  advance  covered  by  the 
patent  did  not  amount  to  invention ;  it  is  necessary  to  set 
up  the  defence  of  want  of  invention  in  an  answer.9  A 


1  Hendy  e.  Iron  Works,  127  U.  S. 
375,  1887;  Brown  v.  Piper,  91  U.  8. 

'41,  1875;  Slawson  v.  Railroad  Co. 
107  U.  S.  649,  1882;  Ligowski  Clay 
Pigeon  Co.  v.  Clay  Bird  Co.  34  Fed. 
Rep.  332,  1888;  Hunt  Bros.  Fruit 
Packing  Co.  v.  Cassidy,  53  Fed. 
Rep.  260,  1892;  Goebel  v.  Supply 
Co.  55  Fed.  Rep.  826,  1893;  Schrei- 
ber  v.  Grim,  65  Fed.  Rep.  221, 1895 

2  Risdon  Locomotive  Works  v. 
Medart,  158  U.  S.  84,  1895;  Dick  t>. 
Supply  Co.  25  Fed.  Rep.  105, 1885; 
Kaolatype  Engraving  Co.  «.  Hoke, 
30  Fed    Rep.  444,  1887;  New  York 
Belting  Co.  v.  Rubber  Co.  30  Fed. 
Rep.  785,    1887;  West    v.   Rae,  33 
Fed.    Rep.   45,   1837;    Richards  «. 
Michigan  Central  Railroad  Co.  40 
Fed.  Rep.    165,    1889;    Studebaker 
Mfg.  Co.  v.  Illinois  Bolt  Co.  42  Fed. 
Rep.52,1890;  Fougeres  ®  Murberger, 
44  Fed.  Rep.  293,  1890;  Root  v.  Son- 
tag,     47     Fed.     Rep.     309,     1891; 
United    States  Credit  System  Co. 
v.    Indemnity    Co.    51    Fed.    Rep. 
751,    1893;    United    States  Credit 
System  Co.  v.  Credit  Co.  53  Fed. 


Rep.  818,   1893;  Wall  «.  Leek,   61 
Fed.  Rep.  291,  1894. 

3  Kaolatype    Engraving    Co.    v. 
Hoke,  30  Fed.  Rep.  444,  1887. 

4  Bottle  Seal  Co.  «.  De  La  Vergne 
Co.  47  Fed.  Rep.  61, 1891. 

6  Eclipse  Mfg  Co.  v.  Adkins,  36 
Fed.  Rep.  554,  1888. 

6  New  York  Belting   Co.  v.  New 
Jersey  Rubber  Co.  137  U.   S.  449, 
1890. 

7  Blessing  ®.  Copper  Works,  34 
Fed.   Rep.  753,   1888;    LaLance  & 
Grosjean  Mfg.   Co.  v.  Mosheim,  48 
Fed.    Rep.    452.   1891;    Hanlon    v. 
Primrose,  56  Fed.  Rep.  600,  1893. 

3  Standard  Oil  Co.  v.  Southern 
Pacific  Co.  42  Fed.  Rep.  295,  1890, 
Krick  v.  Jansen,  52  Fed.  Rep.  823, 
1892;  Drainage  Construction  Co.  «. 
Engelwood  Sewer  Co.  67  Fed.  Rep. 
141,  1894. 

9  Bottle  Seal  Co.  «.  De  LaVergne 
Co.  47  Fed  Rep.  61, 1891;  Brickill  v. 
Hartford.  57  Fed.  Rep.  217,  1893; 
Drainage  Construction  Co.  v  Engle- 
wood  Sewer  Co.  67  Fed.  Rep.  141, 
1894. 


CHAP.  XX.]  ACTIONS   IN  EQUITY.  461 

demurrer  will  not  be  sustained,  in  such  a  case,  on  the  basis 
of  what  the  patent  may  set  forth  as  the  state  of  the  prior 
art ;  unless  the  patentee  is  some  way  estopped  from  show- 
ing the  patent  to  be  otherwise  than  accurate  in  its  state- 
ments on  that  subject.1  A  plea  is  not  applicable  to  such  a 
case,  because  defendants  can  seldom  swear  to  the  state  of 
the  art,  and  even  where  they  can,  they  cannot  plead  result- 
ing want  of  invention,  because  that  depends  upon  the  con- 
struction of  the  patent,  which  is  to  be  made  by  the  court  in 
the  light  of  the  state  of  the  art.  When  interposing  this 
defence  in  an  answer,  it  is  not  necessary  to  state  what  facts 
are  intended  to  be  proved  in  its  support ;  because  those 
facts  refer  only  to  the  state  of  the  art,  and  not  to  novelty.2 
The  function  of  an  answer,  in  respect  of  this  defence,  is  to 
notify  the  complainant  that  the  evidence  of  the  state  of  the 
art,  which  is  taken  by  the  defendant,  will  be  invoked  at  the 
hearing  to  show  want  of  invention,  and  not  merely  to  nar- 
row the  patent  and  thus  show  lion-infringement. 

§  600.  The  third  defence  cannot  be  set  up  in  a  plea, 
because  the  statute  expressly  provides  that  it  shall  be  set 
up  in  an  answer.3  Nor  can  it  be  based  on  such  a  notice  as 
will  effect  the  purpose  in  an  action  at  law.4  It  requires  an 
answer  for  its  embodiment;5  and  that  answer  must  state 
the  same  things  which  a  statutory  notice  of  want  of  novelty 
in  an  action  at  law  is  required  to  contain." 

It  has  been  held  on  the  circuit,  that  evidence  of  want  of 
novelty,  taken  without  being  properly  pleaded  in  the  answer, 
is  not  made  admissible  by  being  set  up  in  a  subsequent 


1  Indurated  Fibre  Co.  v.  Grace,  4  Doughty  v.  West.  2  Fisher,  555, 
52  Fed.  Rep.  128,  1892,  1865. 

2  Vance  v.  Campbell,   1   Black.  6  Seymour  v.   Osborne,  11  Wal- 
430,  1861;  Hunt  Bros.  Fruit  Pack-  lace,  516.  1870;  Roemer  v.   Simon, 
ing  Co.  «.  Cassidy,   53  Fed.    Rep.  95  U.  S.  214,  1877. 

260,   1892;  Dayton  Crupper  Co.  ®.  6  Agawam  Co.  v.  Jordan,  7  Wal- 

Ruhl,  55  Fed.  Rep.  651,  1893.  lace,  583.  1868;  Bates  «.  Coe,  98  U. 

3  Carnrick  v.   McKesson,  8  Fed.  S.  81,  1878;  Planing-Machine  Co  v. 
Rep.  807,  1881.  Keith,  101  U.  S.  493,  1879. 


462  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

amendment  of  that  pleading.1  In  another  case  it  was  held 
to  rest  in  the  discretion  of  the  court  to  admit  the  evidence, 
so  taken  and  subsequently  pleaded,  or  to  reject  that  evi- 
dence, but  permit  the  defendant  to  take  it  anew  under  the 
amended  answer.2  These  holdings  are  hardly  consistent 
with  each  other,  and  neither  of  them  seems  consistent  with 
an  earlier  Supreme  Court  decision  on  a  similar  point.3  In 
that  case  it  was  held  that  evidence  of  want  of  novelty  is 
admissible  in  an  action  at  law,  where  it  was  taken  without 
being  properly  set  up  in  any  notice,  but  where  a  proper 
notice  was  subsequently  given,  and  given  thirty  days  before 
the  trial. 

Where  the  answer  states  that  the  patent  sued  on  is  void 
for  want  of  novelty,  evidence  to  support  that  statement  will 
be  admitted  on  the  hearing,  though  not  specified  in  the 
answer,  unless  the  complainant  objects  to  that  evidence  for 
want  of  the  statutory  notice.4 

§  601.  The  fourth  defence  cannot  rightly  be  made  in  a 
plea,  for  though  a  defendant  may  make  an  oath  that  he 
believes  the  patented  thing  to  be  without  utility,  he  can 
hardly  swear  that  it  is  certainly  so.  Others  might  succeed 
in  using  it  where  he  had  failed.  An  answer  is  therefore 
the  only  proper  pleading  for  this  defence,  and  without 
being  set  up  in  the  answer,  it  cannot  be  made  at  the 
hearing.5 

§  602.  The  fifth  and  sixth  defences  both  require  to  be 
interposed  in  answer,  because  they  both  rest  on  evidence 
of  abandonment  outside  of  the  bill,  and  therefore  cannot  be 
interposed  by  a  demurrer,6  and  because,  being  two  of  the 


1  Roberts  v.  Buck,  1  Holmes,  234,  49,  1878. 

1873.  5  Rubber  Co.  v.  Goodyear,  9  Wal- 

2  Allis  v.  Buckstaff,  13  Fed.  Rep.  lace,  793,  1869;  Ames  &  Frost  Co. 
879,  1882.  t>.  Woven  Wire  Mach,  Co.  59  Fed. 

3  Teese  v.  Huntingdon,  23  How-  Rep.  705,  1893. 

ard,  2,  1859.  6  United  States  Electric  Lighting 

4  Roemer  v.  Simon,  95  U.  S.  220,  Co.  v.  Consolidated  Electric  Light 
1877;  Brown  «.  Hall,  6  Blatch.  405,  Co.  33  Fed.  Rep.  869,  1888. 

1869;  Barker  v.  Stowe,  15  Blatch. 


CHAP.  XX.  J  ACTIONS   IN  EQUITY.  463 

five  defences  provided  for  by  Section  4920  of  the  Revised 
Statutes,  neither  of  them  can  be  set  up  in  a  plea.J  And  an 
answer  must  show  what  fact  or  facts  constitute  the  aban- 
donment which  is  invoked  therein.2 

§  603.  The  seventh  defence  cannot  be  interposed  in  a 
plea  because  it  involves  the  construction  of  the  claims  of 
the  letters  patent  in  suit.  Letters  patent  are  not  void 
merely  because  they  describe  something  not  shown  in  the 
original  application  therefor.  It  is  only  when  they  claim 
something  not  indicated  or  described  in  the  specification  or 
drawings  of  the  original  application  that  they  are  obnoxious 
to  the  seventh  defence.  The  question  what  letters  patent 
claim  is  a  question  of  law  for  the  court,  and  is  therefore 
not  one  which  can  be  raised  by  a  plea  in  an  action  in  equity. 
JSor  can  this  defence  be  raised  by  a  demurrer,  because,  in 
order  to  decide  upon  its  validity  the  court  must  not  only 
construe  the  claims  of  the  patent,  but  must  also  compare 
the  claims  so  construed  with  the  original  application,  and 
that  application  must  be  introduced  for  the  purpose,  as  a 
matter  of  evidence.  This  defence  must  therefore  be  set  up 
in  the  answer,  except  where  the  complainant  takes  the 
initiative  upon  the  subject.  In  that  case  the  complainant 
must  maintain  the  validity  of  his  patent  against  this  defence, 
even  where  it  is  not  specifically  interposed  in  the  answer.3 

§  604.  The  eighth  defence  cannot  be  set  up  in  a  plea,  but 
must  be  interposed  in  an  answer,  because  it  is  one  of  the 
five  for  which  the  statute  prescribes  that  form  of  pleading 
in  equity  cases.4 

§  605.  Either  the  ninth  or  the  tenth  defence  may  be  inter- 
posed in  a  plea,  where  the  defendant  knows  the  fact  of  joint 
or  of  sole  invention  upon  which  they  respectively  stand. 
Each  of  these  defences  rests  upon  a,  single  matter  of  fact, 
which  if  decided  against  the  complainant  is  fatal  to  his 

1  Carnrick  v.  McKesson,  8  Fed.  Heating  Co.  07  Fed.  Rep.  121, 1895. 
Hep.  807,  1881.  *  Revised  Statutes,  Section  4920; 

2  Western  Electric  Co.  v.  Sperry  Carnrick  v.  McKesson,  8  Fed.  Rep. 
Electric  Co.  58  Fed.  Rep.  192, 1893.  807,  1881;  Ecaubert  v.  Appleton.  47 

8  Michigan  Cent.  R.  R.  Co.  t>.  Car      Fed.  Rep.  893,  1891. 


464  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

patent.  But  it  is  always  unwise  to  make  either  of  these 
defences  in  a  plea,  because  the  complainant  will  have  no 
alternative  but  to  file  a  replication,  and  because,  by  doing 
so,  he  may  foreclose  other  defences,  and  because  there  is 
always  a  possibility  that  the  court  will,  on  the  evidence, 
decide  that  the  invention  was  joint,  or  was  several,  accord- 
ing as  it. may  be  necessary  to  do  in  order  to  sustain  the 
patent.1  An  answer  is  therefore  the  best  pleading  in  which 
to  embody  either  of  these  two  defences. 

§  606.  The  eleventh  defence  stands  in  the  same  category, 
in  respect  of  equity  pleading,  with  the  third,  fifth,  sixth,  and 
eighth,  and  must,  like  them,  be  made  in  an  answer,  and  not 
in  a  plea. 

§  607.  The  twelfth  defence  cannot  be  made  in  a  plea, 
because,  though  the  defendant  might  be  able  to  make  oath 
that  he  is  a  person  skilled  in  the  art  to  which  the  invention 
covered  by  the  patent  appertains,  and  that  the  description 
contained  in  that  patent  is  not  full,  clear,  concise,  and  exact 
enough  to  enable  him  to  make  and  use  the  same,  he  could 
not  make  oath  that  the  same  thing  is  true  of  other  persons 
skilled  in  that  art.  An  answer  is,  therefore,  the  proper 
pleading  for  this  defence  also. 

§  608.  Nor  can  the  thirteenth  defence  be  set  up  in  a  plea, 
because  it  depends  on  the  construction  of  the  claims  of  the 
letters  patent,  and  not  upon  any  matter  of  fact  to  be  sworn 
to  in  a  plea  or  proved  in  a  deposition.  But  this  defence 
can  be  made  by  a  demurrer,  where  profert  has  been  made 
of  the  letters  patent,  or  they  have  otherwise  been  made 
a  part  of  the  bill.2  An  answer  is  also  a  proper  pleading  in 
which  to  interpose  this  defence. 

§  609.  The  fourteenth  defence  also  generally  requires  to 
be  set  up  in  an  answer.3  A  plea  is  not  ordinarily  suitable 
for  the  purpose,  because  this  defence  depends  primarily 
upon  the  necessity  for  a  disclaimer,  and  because  that  neces- 


i  Pitts  v.  Hall,  2Blatch.  229,  1851;  Rep.  373,  1892. 

Blandy  r>.   Griffith,  3  Fisher,  616,  3  Burden  v.   Corning,   2    Fisher, 

1869.  498,  1864. 

2Brickill    ».    Hartford,  49    Fed. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  465 

sity  depends  upon  the  claim  being  obnoxious  to  one  or  more 
of  the  first  three  defences,  and  because  the  third  defence 
always,  and  the  first  and  second  generally,  require  to  be 
interposed  in  an  answer,  if  interposed  at  all. 

§  610.  The  fifteenth  defence  can  never  be  interposed  in  a 
plea,  because  it  primarily  depends,  either  upon  the  original 
patent  not  being  inoperative  or  invalid  by  reason  of  a 
defective  or  insufficient  specification,  or  upon  its  not  being 
invalid  in  part,  for  want  of  novelty.1  Where  it  primarily 
depends  upon  the  first  of  these  matters,  it  depends  either 
upon  the  construction  of  the  original  letters  patent,  or  upon 
proof  that  any  person  skilled  in  the  art  to  which  the  inven- 
tion belongs,  could  from  the  original  specification  make  and 
use  the  same  ;  and  where  it  depends  upon  the  second  of 
these  matters,  it  depends  upon  proof  that  everything  claimed 
in  the  original  letters  patent  was  novel.  None  of  these 
matters  can  ordinarily  be  put  into  a  plea.  Statements  of 
the  true  construction  of  a  patent  cannot  be,  because  they 
are  statements  of  law.  Statements  that  any  person  skilled 
in  the  art  can  make  and  use  a  particular  invention,  from  a 
particular  specification,  are  hardly  proper  in  pleas,  because 
a  defendant  ought  seldom  to  attempt  to  swear  what  other 
persons  can  or  cannot  do.  And  statements  that  everything 
claimed  in  the  patent  of  another  was  novel  with  him,  should 
never  go  into  a  plea,  because  a  defendant  can  never  know 
that  none  of  those  things  were  previously  known  or  used. 
Nor  can  this  defence  be  raised  by  a  demurrer,  unless  the 
original  letters  patent  are  incorporated  in  the  bill  for 
infringement  of  its  reissue  ;  and  not  even  then  can  it  be  so 
raised,  unless  the  question  is  solely  one  of  construction  of 
the  original  letters  patent.  An  answer  is  always  the  most 
suitable  place  in  which  to  interpose  this  defence,  and  gener- 
ally it  is  the  only  possible  pleading  for  the  purpose. 

§  611.  The  sixteenth  defence  depends  partly  on  the  com- 
parative construction  of  the  original  and  reissue  letters 
patent,  and  partly  upon  evidence  that  the  delay  in  applying 

1  Revised  Statutes,  Section  4916. 


466  ACTIONS   IN    EQUITY.  [CHAP.    XX. 

for  the  reissue  was  unreasonable.  Where  both  the  original 
and  the  reissue  are  proffered  or  incorporated  in  the  bill ; 
this  defence  may  be  made  by  demurrer,  because  the  court 
then  has  every  necessary  means  of  making  the  comparative 
construction,1  and  because  long  delay  will  be  held  to  be 
unreasonable,  unless  it  is  excused  in  the  bill.  Where  the 
bill  omits  to  set  out  the  original  patent,  this  defence  must 
be  made  in  an  answer;  for  such  mixed  questions  of  law  and 
fact  are  wholly  unsuitable  to  a  plea.2 

§  612.  The  seventeenth  defence  depends  upon  the  com- 
parative construction  of  the  original  and  reissue  letters 
patent.  It  may  be  made  on  demurrer,  where  both  those 
documents  are  proffered  or  otherwise  incorporated  in  the 
bill.  If  the  original  letters  patent  are  not  so  incorporated, 
this  defence  may  be  made  in  an  answer  ;  but  it  cannot  be 
made  in  a  plea,  because  the  question  involved  is  one  of 
construction  of  documents,  and  not  a  question  of  fact  to  be 
sworn  to  by  a  defendant,  or  to  be  decided  upon  the  replica- 
tion of  the  complainant  and  the  evidence  of  experts. 

§  613.  The  eighteenth  defence  may  be  made  by  a  demur- 
rer where  the  bill  is  based  on  the  prior  patent,  as  well  as 
on  its  alleged  double.3  But  a  plea  is  not  suitable  to  this 
defence,  unless  the  disputed  claim  or  claims  in  the  subse- 
quent patent  can  be  plainly  seen  to  be  identical  with  a  claim 
or  claims  in  the  prior  patent ;  for  if  construction  must  be 
resorted  to  in  order  to  determine  identity,  or  want  of  iden- 
tity, between  the  claims  of  the  two  patents,  the  question  is 
one  of  law,  and  therefore  improper  to  be  raised  by  a  plea 
in  equity.  And  an  answer  is  always  a  proper  pleading  in 
which  to  interpose  this  defence. 

§  614.  The  nineteenth  defence  may  be  set  up  in  a  plea,  if 
the  defendant  has  personal  knowledge  of  the  record  which 


1  Powder  Co.  «.  Powder  Works,  2  Maxwell  v.  Kennedy,  8  Howard, 

98  U.  8.  126,  1878;   Wollensak  «.  222,  1850. 

Reiner,  115  U.  8.  96,  1884;  Inter-  3  Russell  v.  Kern,  64  Fed.  Rep. 

national  Terra  Cotta  Lumber  Co.  v.  581,  1894. 
Maurer,  44  Fed.  Rep.  619,  1890. 


CHAP.  XX.  J  ACTIONS  IN   EQUITY.  467 

he  pleads,  and  can  therefore  make  the  required  oath  that 
there  is  in  fact  such  a  record.  If  he  has  no  such  knowledge, 
the  defence  must  be  made  in  an  answer,  for  the  ancient  rule 
that  records  may  be  pleaded  in  equity,  without  an  oath,  is 
inconsistent  with  the  United  States  equity  rule  upon  the 
subject  of  pleas.1 

§  615.  The  twentieth  defence  can  be  made  by  a  demurrer, 
where  the  bill  shows  the  patent  to  have  expired  when  the 
doings  which  constitute  the  alleged  infringement  were  com- 
mitted. But  that  will  seldom  be  the  fact,  for  the  expiration 
relied  upon  in  such  cases  is  nearly  always  due  to  the  expira- 
tion of  some  foreign  patent  for  the  same  invention,  and  not 
to  anything  which  appears  on  the  face  of  the  United  States 
patent  in  suit.  Where  the  defence  depends  upon  the  expi- 
ration of  a  foreign  patent  which  is  not  mentioned  in  the  bill, 
it  cannot  be  set  up  in  a  demurrer.  Nor  can  it  often  be  set 
up  in  a  plea,  because  it  depends  not  only  upon  the  existence 
of  a  foreign  patent,  but  also  upon  that  patent  being  for  the 
the  same  invention  as  the  patent  in  suit,  and  because  this 
last  question,  except  where  the  two  patents  are  plainly  iden- 
tical, is  one  of  construction  for  the  court,2  and  because 
defences  which  depend  upon  the  comparative  construction 
of  different  documents  cannot  be  interposed  in  a  plea.3  This 
defence  must  therefore  generally  be  made  in  an  answer. 

§  616.  The  twenty-first  defence  may  be  made  in  a  plea,  if 
the  defendant  knows  that  the  complainant  made  or  sold 
specimens  of  the  patented  thing  during  the  life  of  the  patent 
without  marking  them  "  patented,"  and  if  the  defendant  was 
not  duly  notified  of  his  infringement,  or,  if  notified,  imme- 
diately discontinued  to  infringe.4  This  defence  can  also  be 
made  without  any  special  statement  relevant  thereto  in  the 
answer,  because  the  complainant  must  negative  it  in  his  bill 
and  in  his  evidence  in  chief,  or  suffer  the  operation  of  the 
defence,  whether  the  defendant  has  set  it  up  in  any  plead- 


1  Equity  Rule  31.  8  Lowrey    v.   Aluminum    Co.   56 

3  De  Florezt).  Reynolds,  ITBlatch.      Fed.  Rep.  495,  1893. 
436,  1880.  *  Revised  Statutes,  Section  4900. 


468  ACTIONS   IN  EQUITY.  [CHAP.  XX. 

ing  or  not.1  But  this  defence  is  seldom  a  full  defence  to  an 
action  in  equity.  It  is  never  a  defence  to  a  prayer  for  an 
injunction,  though  it  is  to  a  prayer  for  damages.2  Whether 
it  is  a  defence  to  a  prayer  for  infringer's  profits,  is  an  unset- 
tled question,  the  solution  of  which  will  involve  the  balanc- 
ing of  a  number  of  considerations.  In  the  affirmative,  it 
can  be  argued  that  profits  are  but  equitable  substitutes  for 
damages,  and  as  equity  follows  the  law  in  respect  of  other 
parts  of  the  patent  system,  it  ought  also  to  follow  it  in  this. 
But  it  can  be  replied  in  the  negative,  that  equity  does  not 
altogether  follow  the  law  in  the  matter  of  pecuniary  recov- 
eries for  infringements  of  patents,  but  primarily  determines 
the  amounts  of  such  recoveries  on  quite  different  principles 
from  those  used  in  courts  of  law  for  that  purpose.  And  it 
can  also  be  argued  in  the  negative,  that  though  it  would  be 
wrong  to  force  a  defendant  to  pay  damages,  regardless  of 
the  amount  of  his  profits,  for  infringements  against  which 
the  complainant  neglected  to  warn  him,  it  would  not  be 
unjust  to  compel  a  defendant  to  return  to  the  complainant 
whatever  profits  the  former  realized  from  even  an  unwitting 
infringement  of  the  patent  of  the  latter.  To  this  last  point 
it  can  be  rejoined  for  the  affirmative,  that  such  a  case  is  not 
merely  a  case  of  unwitting  infringement,  but  is  also  an 
instance  of  a  patentee  leading  others  to  infringe  his  patent, 
by  unlawfully  concealing  the  fact  of  its  existence,  and  that, 
though  a  failure  to  mark  "  patented  "  would  lack  some  of 
the  elements  of  a  technical  estoppel,  still  it  is  such  a  viola- 
tion of  the  statute  as  ought  to  cause  a  forfeiture  of  all  reme- 
dies for  infringement  committed  before  the  giving  of  actual 
notice  of  the  patent. 

§  617.  The  twenty-second  defence  may  be  made  by 
demurrer,  where  the  bill  sets  forth  copies  of  the  complain- 
ant's title  papers,  either  in  the  stating  part  or  as  exhibits 
attached  to  the  bill  and  thus  made  parts  thereof,  or  where 
the  bill  pleads  those  papers  according  to  their  legal  effect, 

1  Dunlap  v.  Schofleld,  152  U.  S.  2  Goodyear  v.  Allyn,  6  Blatch.  33, 
244,  1894.  1868. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  469 

and  in  such  a  way  that  the  title  appears  on  the  face  of  the 
bill  to  be  defective.  Where  the  bill  shows  a  good  prima 
facie  title,  but  where  the  defendant  knows  that  one  of  the 
papers  which  compose  its  chain  was  executed  after  the 
assignor  had  assigned  his  right  to  another,  and  that  the 
prior  assignment  was  recorded  in  the  Patent  Office  within 
three  months  after  its  date ;  or  knows  that  such  assignor 
assigned  his  right  to  another  for  a  valuable  consideration 
more  than  three  months  after  the  making  of  the  assignment 
set  up  in  the  bill,  and  before  the  latter  was  recorded  in  the 
Patent  Office,  and  without  the  junior  assignee  having  notice 
of  the  senior  unrecorded  assignment,  the  defendant  may 
successfully  set  up  those  facts  in  a  plea.  The  action  of  a 
complainant  will  be  defeated  by  evidence  of  either  of  these 
two  sorts  of  faults  in  his  title.1  Either  of  these  sets  of  facts 
may  also  be  set  up  in  an  answer,  as  also  may  any  fact  which 
derogates  from  the  complainant's  apparent  title ;  but  no 
defect  of  title  due  to  an  outstanding  unrecorded  document 
can  be  made  available  as  a  defence  without  being  pleaded.2 

§  618.  The  twenty-third  defence  may  be  put  into  a  plea ; 
and  that  is  the  most  appropriate  pleading  in  which  to  inter- 
pose it,  where  the  defendant  is  sure  of  the  fact  of  a  license. 
Otherwise  this  defence,  where  it  exists,  should  be  interposed 
in  an  answer.  A  plea  of  this  defence  must  state  the  char- 
acter of  the  license  specifically  ;3  and  there  appears  to  be 
no  reason  why  an  answer  should  not,  on  this  point,  be  as 
specific  as  a  plea. 

§  619.  The  twenty-fourth  defence  should  be  treated  in 
respect  of  pleading  in  the  same  way  as  the  twenty-third, 
and  that  whether  the  release  pleaded  was  executed  before 
or  after  the  filing  of  the  bill. 

§  620.  The  twenty-fifth  defence  may  be  interposed  by  a 
demurrer,  where  the  bill  sets  forth  the  claims  alleged  to  be 
infringed,  and  sets  forth  also  the  particular  character  of  the 


1  Revised  Statutes,  Section  4898.          8  Jones  «.  Berger,  58  Fed.  Rep. 

2  California    Electric    Works    v.       1007,  1893 
Fink,  47  Fed.  Rep  583,  1891. 


470  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

defendant's  doings.1  It  has  been  held  by  several  excellent 
judges  that  this  defence  of  non-infringement  cannot  be  set 
up  in  a  plea.2  It  would  be  an  economical  practice  to  so 
prepare  bills  that  this  defence  could  be  made  by  demurrer ;. 
but  where  a  bill  is  not  so  prepared,  an  answer  is  the  only 
pleading  in  which  to  interpose  it.  And  where  the  prior  art 
is  a  necessary  part  of  the  foundation  of  a  defence,  it  cannot 
be  made  by  demurrer. 

§  621.  The  twenty-sixth  defence  may  be  made  in  a  plea, 
and  it  ought  to  be  so  made  in  every  case  where  the  defendant 
is  certain  that  he  can  prove  the  facts  which  he  is  advised 
amount  to  a  basis  for  an  estoppel.  If  those  facts  are  found, 
on  an  argument  of  the  plea,  not  to  constitute  an  estoppel, 
the  defendant  will  be  permitted  to  file  an  answer  setting  up 
other  defences.  Or  the  defence  of  estoppel  can  be  set  up 
in  an  answer  in  the  first  instance.  And  where  that  defence 
consists  of  resjudicata,  the  former  record  can  be  introduced 
in  evidence  without  being  specially  pleaded  in  the  answer.3 

§  622.  The  twenty-seventh  defence  may  be  interposed  by 
a  demurrer,  where  the  bill  clearly  states  the  time  when  the 
infringement  was  committed,  or  the  space  of  time  during 
which  it  was  carried  on.4  Where  the  bill  simply  states  that 
the  infringement  occurred  during  the  life  of  the  patent,  and 
where  any  part  of  that  life  is  remote  enough  in  point  of 
time  to  be  barred  by  either  the  national  or  any  State  statute 
of  limitation,  if  either  is  applicable  thereto,  then  the  appli- 
cable statute  must  be  set  up  in  a  plea  or  in  an  answer,  in 
order  to  avail  the  defendant.  An  answer  is  to  be  preferred 
to  a  plea  for  this  purpose  in  all  cases  where  the  statute 
bars  only  a  part  of  the  right  upon  which  the  action  is 
based ;  because  an  answer  must  generally  be  filed  to  the 


1  Collins  Chemical  Co.  v.  Capitol  Fed.  Rep.  51, 1887;  Jones  v  Berger, 
City  Mfg.  Co.  42  Fed.  Rep.  64, 1890;  58  Fed.  Rep  1006,  1893. 

Gerard  v.  Safe  &  Lock  Co.  48  Fed.  3  Bradley  Mfg.  Co.  v.  Eagle  Mfg. 

Rep.  380,  1891.  Co.  58  Fed.  Rep.  721.  1893. 

2  Sharp  v.  Reissner,  9  Fed.  Rep.  4  Brickill  «.    Hartford,   49    Fed. 
445,   1881;    Korn  e.   Wiebusch,   33  Rep.  374,  1892. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  471 

residue  of  the  bill,  and  because  the  proceedings  are  simpli- 
fied by  putting  all  the  defences  into  one  pleading. 

Statutes  of  limitation  have  the  same  effect  upon  actions 
in  equity  in  the  Federal  courts,  that  they  have  upon  corre- 
sponding actions  at  law.1 

§  623.  A  replication  is  required  to  be  filed  by  the  com- 
plainant, in  order  to  put  in  issue  those  points  wherein  the 
answer  disagrees  with  the  bill.  No  special  replication  is 
permitted  in  equity  in  the  United  States  courts.2  The  gen- 
eral replication  is  required  to  be  filed  on  or  before  the  rule 
day  which  next  succeeds  that  upon  which  the  answer  is 
due  and  is  filed ; 3  but  if  filed  after  that  time,  it  may,  at  the 
discretion  of  the  court,  be  ordered  to  stand;4  or  it  may,  if 
offered  after  that  time,  be  allowed  by  the  court  to  be  filed 
nunc pro  tune  as  of  the  day  whereon  it  was  due.5 

§  624.  Before  tracing  further  the  common  course  of  an 
action  in  equity  for  infringement  of  a  patent,  it  is  expedient 
to  make  a  short  excursion  into  the  field  of  those  subordi- 
nate bills  which  are  sometimes  required  to  be  filed  before 
decrees  for  infringements  can  properly  be  entered.  Four 
kinds  of  such  bills  are  known :  1.  Supplemental  bills.  2. 
Bills  in  the  nature  of  supplemental  bills.  3.  Bills  of 
revivor.  4.  Bills  in  the  nature  of  bills  of  revivor. 

§  625.  A  supplemental  bill  is  required  where  the  original 
bill  was  filed  by  a  person  as  executor  or  administrator, 
or  as  assignee  in  bankruptcy  or  insolvency,  whenever  any 
other  person  succeeds  to  the  title  of  the  complainant  to  act 
in  that  representative  capacity.6  Such  a  bill  is  also  neces- 
sary, in  order  to  subject  the  estate  of  the  defendant  to  a 
decree,  where  he  is  adjudged  bankrupt  or  insolvent  after 
the  bill  against  him  is  filed.7  His  assignee  in  bankruptcy 

1  Elmendorf  v.  Taylor,  10  Whea-         5  Pierce  v.  West's  Executors,  1 
ton,  168,  1825;  Miller  v.  Mclntyre,      Peters'  Circuit  Court  Reports,  351, 
6  Peters,  66,  1832;    Bank  of  United      1816. 

States  v.  Daniel,  12  Peters,  56, 1838.         B  Story's  Equity  Pleading,   Sec- 

2  Equity  Rule  45.  tion  340. 

8  Equity  Rule  66.  7  Mitford  &  Tyler's  Equity  Plead- 

4  Fisher  v.  Hayes,  6  Fed.  Rep.  77,      ing,  166. 
1881. 


472  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

or  insolvency  is  the  proper  person  to  be  made  the  defend- 
ant to  such  a  bill.1  He  will  come  before  the  court  in  the 
same  plight  as  that  of  the  bankrupt,  and  will  be  bound  by 
all  the  prior  proceedings  in  the  case.2  A  supplemental  bill 
is  also  a  proper  one  to  be  filed  against  a  stranger  to  the 
original  bill,  where  he  has  conspired  with  the  original 
defendant  to  infringe  the  patent  in  suit  after  the  original 
defendant  was  enjoined  from  doing  so  himself.3  And  such 
a  bill  is  proper,  where  a  patent  is  extended  after  the  filing 
of  the  original  bill,  if  the  defendant  continues  to  infringe 
the  patent  after  the  extension  is  granted.4  The  same 
reasons  which  support  the  latter  rule  will  also  support  a 
supplemental  bill  based  on  a  new  patent  covering  some 
feature  of  those  doings  of  the  defendant  which  also  infringe 
the  patent  originally  sued  upon ;  and  will  also  support  such 
a  bill  where  the  defendant  so  changes  the  character  of  his 
doings  pendente  lite  as  to  make  them  infringe  some  other 
patent  of  the  complainant,  as  a  part  of  the  same  acts  that 
constitute  infringements  upon  the  patent  upon  which  the 
original  bill  was  based.  But  a  good  title,  acquired  after 
the  filing  of  an  original  bill,  cannot  be  brought  into  a  case 
by  a  supplemental  bill  to  take  the  place  of  the  bad  title 
stated  in  the  original  bill.5 

§  626.  A  bill  in  the  nature  of  a  supplemental  bill  is  called 
for  where  the  original  bill  was  filed  by  a  person  in  his  own 
right,  whenever  that  right  passes  to  another  person  by  vol- 
untary assignment,  or  passes  from  the  complainant  to  his 
assignee  in  bankruptcy  or  insolvency.6  This  rule  applies 
not  only  to  cases  where  the  entire  right  of  a  sole  complain- 
ant is  thus  transferred  pendente  lite,  but  also  to  cases  where 
the  right  of  one  of  several  complainants  is  so  transferred, 


1  Sedgwick  v.  Cleveland,  7  Paige  1874. 

(N.  Y.),  290,  1838.  5  Emerson  v.   Hubbard,  34  Fed. 

2  Mitford  &  Tyler's  Equity  Plead-  Rep.  327,  1888. 

ing,  166.  6  Story's  Equity  Pleading,  Sec- 

3  Parkhurst  v.  Kinsman,  2  Blatch.  tion  349;   Ross  «.  Ft.  Wayne,  63 
72, 1848.  Fed.   Rep.  470,   1894;    Ecaubert  v. 

4  Reedy  v.  Scott,  23  Wallace,  352,  Appleton,  67  Fed.  Rep.  924,  1895. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  473 

and  to  cases  where  a  part  only  of  the  right  of  a  sole  com- 
plainant is  made  the  subject  of  a  voluntary  assignment  after 
the  filing  of  the  original  bill.1  And  a  bill  in  the  nature  of 
a  supplemental  bill,  even  if  filed  after  the  expiration  of  the 
patent,  may  be  maintained  in  equity,  if  the  original  bill  was 
filed  before  the  expiration  of  the  patent,  and  could  have 
been  thus  maintained.2 

§  627.  A  bill  of  revivor  is  the  proper  means  of  reviving 
and  continuing  an  action  in  equity  for  infringement  of  a 
patent,  which  has  abated  by  reason  of  the  death  of  one  or 
more  of  the  parties  thereto.3  It  is  to  be  brought  by  or 
against  the  executor  or  administrator  of  the  deceased  party, 
and  not  by  or  against  his  heirs.4  When  such  a  bill  is  filed, 
if  the  facts  warrant  him  in  so  doing,  the  defendant  may  file 
a  plea  denying  that  the  person  who  filed  the  bill  was 
entitled  to  do  so,5  or  interposing  some  statute  of  limitation 
applicable  to  bills  of  revivor.5  There  is  no  Federal  statute 
of  that  kind,  but  the  relevant  statutes  of  the  several  States 
are  applicable  to  bills  of  revivor  in  Federal  courts.7  Those 
State  statutes  are  of  many  species.  In  some,  the  limitation 
begins  to  run  from  the  death  of  the  deceased  complainant ; 
and  in  others,  from  the  time  his  death  is  suggested  in  the 
case ;  and  in  others,  from  the  time  when  a  scire  facias  to 
revive  is  served  on  the  person  entitled  to  revive.  The 
length  of  the  limitation  also  varies  in  the  different  States. 
Perhaps  the  shortest  time  is  six  months,  and  the  longest 
eighteen. 

Where  'a  bill  of  revivor  is  filed  by  the  proper  person 
within  the  proper  time,  the  action  will  stand  revived  without 
any  pleading  being  filed  by  the  defendant.8  But  where  a 


1  Story's  Equity  Pleading,  Sec-         6  Story's  Equity  Pleading,   Seo- 

tion  346.  tions  829  and  830. 

3  Ross  v.  Ft.   Wayne,    63  Fed.          «  Story's  .Equity  Pleading,  Sec- 
Rep.  466,  1894.  tion  831. 

3  Kirk  0.  Du  Bois,  28  Fed.  Rep.          7  Revised  Statutes,  Section  721; 

460, 1886.  Campbell  v.  Haverhill,  155  U.  8. 

«  Story's  Equity  Pleading,  Sec-      610,  1895. 

tion  354«.  8  Equity  Rule  56. 


474  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

defendant  dies  without  filing  a  sufficient  answer  to  the 
original  bill  and  the  amendments  thereto,  the  bill  of  revivor 
which  is  occasioned  by  his  death  ought  to  pray  that  the 
person  against  whom  it  seeks  to  revive  the  suit  be  com- 
pelled to  answer  the  original  bill  and  its  amendments,  or  so 
much  thereof  as  remains  unanswered.1  After  an  action  in 
equity  has  been  duly  revived,  it  proceeds  in  the  new  form, 
unaffected  by  the  change  of  name ;  and  all  the  testimony 
theretofore  taken  may  be  thereafter  used,  precisely  as  if  no 
abatement  and  revivor  had  occurred.2 

§  628.  A  bill  in  the  nature  of  a  bill  of  revivor  is  required 
where  the  complainant  in  the  original  bill  assigned  the  right 
of  action  and  the  patent  upon  which  it  was  based,  and  then 
died  before  the  assignee  took  his  place  in  the  action,  by 
means  of  a  bill  in  the  nature  of  a  supplemental  bill.  A  bill 
of  the  latter  sort  will  not  answer  the  purpose,  unless  it  is 
filed  before  the  death  of  the  original  complainant ;  because 
that  death  will  cause  an  abatement  of  the  suit,  and  because 
only  bills  of  revivor,  or  bills  in  the  nature  of  bills  of  revivor, 
can  revive  abated  actions  in  equity.3  Bills  of  revivor  can 
be  filed  only  by  privies  in  law,  such  as  executors  and  admin- 
istrators ;  and  not  by  privies  in  estate,  such  as  devisees  and 
assignees.4  For  the  latter  class  of  persons,  bills  in  the  nature 
of  bills  of  revivor  are  available ;  and  by  means  of  such  a  bill, 
an  assignee  who  did  not  file  a  bill  in  the  nature  of  a  supple- 
mental bill  before  the  death  of  the  original  complainant, 
may  draw  to  himself  the  benefit  of  the  original  action,  in 
whatever  stage  it  may  have  been  at  the  date  of  the  abate- 
ment.5 Such  a  bill  is  also  the  proper  means  of  reviving  an 
action  which  has  abated  at  the  death  of  the  administrator 
or  executor  who  was  prosecuting  it  in  his  representative 
capacity,  if  the  person  entitled  to  revive  represents  the 


1  Story's  Equity  Pleading,   Sec-  3  Equity  Rule  56. 

tion  375;  Mitford  &  Tyler's  Equity  4  Story's  Equity    Pleading,  Sec. 

Pleading.  174.  379. 

2  Vattier  *.  Hinde,  7  Peters,  265,  5  Slack  «.  Walcott,  3  Mason,  511, 
1833.  1825. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  475 

original  testator  or  intestate,  and  not  the  deceased  executor 
or  administrator.1 

§  629.  A  bill  of  revivor  and  supplement  is  merely  a  com- 
pound of  a  supplemental  bill,  and  of  a  bill  of  revivor.2  It 
is  therefore  proper  to  be  filed  when  either  of  the  facts  which 
justify  a  supplemental  bill  and  either  of  the  facts  which 
require  a  bill  of  revivor,  occur  in  one  action.  So  also,  any 
two  or  more  of  the  four  sorts  of  bills  mentioned  in  the  four 
last  sections,  may  be  united  in  one  bill,  whenever  either  of 
the  facts  which  require  either  of  those  bills,  occurs  in  the 
same  action  with  any  of  the  facts  which  require  any  of  the 
others. 

§  630.  Leave  of  court  is  a  prerequisite  to  the  filing  of 
supplemental  bills,  and  bills  in  the  nature  of  supplemental 
bills ;  and  it  is  to  be  obtained  upon  proper  cause  shown, 
and  due  notice  to  the  opposite  party.3  But  neither  bills 
of  revivor  nor  bills  in  the  nature  of  bills  of  revivor,  require 
any  such  order,  for  they  may  be  filed  in  the  clerk's  office 
at  any  time.4  The  reason  of  this  difference  is  that  neither 
of  the  last  two  kinds  of  bills  are  useful  except  in  cases  of 
death.  There  can  be  no  temptation  to  file  such  a  bill  as. 
either,  unless  a  death  has  occurred  among  the  parties  to 
the  action  ;  and  where  such  a  death  has  occurred,  there  can 
be  no  objection  to  the  filing  of  one  or  the  other.  But  the 
first  two  sorts  of  bills  are  based  upon  events  about  the  true 
character  of  which  counsel  may  be  mistaken  in  any  given 
case,  and  it  is  therefore  necessary,  in  order  to  avoid  an 
improper  accumulation  of  pleadings,  that  the  court  should 
pass  upon  the  propriety  of  such  bills  before  they  are  filed. 

§  631.  No  demurrer  plea  or  answer  is  ordinarily  required 
to  be  filed  to  a  bill  of  revivor,  or  to  a  bill  in  the  nature  of  a 
bill  of  revivor.5  But  defendants  are  always  required  to 
demur,  plead,  or  answer  to  supplemental  bills,  and  to  bills 
in  the  nature  of  supplemental  bills.6  Where  a  bill  of  either 

1  Story's  Equity  Pleading,  Sec.          3  Equity  Rule  57. 
382.  4  Equity  Rule  56. 

2  Mitford  &  Tyler's  Equity  Plead-         6  Equity  Rule  56. 
ing,  177.  6  Equity  Rule  57. 


476  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

of  those  kinds  shows  on  its  face  that  the  person  who  filed 
it  was  not  a  proper  person  to  do  so,  the  objection  may  be 
made  by  a  demurrer,1  and  when  that  fault  exists,  but  does 
not  appear  on  the  face  of  the  bill,  the  defence  grounded 
upon  it  may  be  made  by  a  plea.2  Other  defences  can  be 
made  to  supplemental  bills,  or  to  bills  in  the  nature  of  sup- 
plemental bills,  in  the  same  forms  and  in  the  same  circum- 
stances in  which  corresponding  defences  can  be  made  to 
original  bills  for  infringement.3 

§  632.  The  hearing  of  an  action  in  equity  for  infringement 
of  a  patent,  may  take  place  before  pne  of  the  judges  of  the 
court  sitting  alone,  or  before  several  judges  sitting  together, 
or  before  a  judge  and  a  jury,4  or  before  a  master  in  chan- 
cery.5 Judges  constitute  the  best  tribunals  for  the  purpose  ; 
but  as  either  of  the  other  methods  of  trial  may  be  resorted 
to  at  the  will  of  the  court,  it  is  expedient  to  outline  the  law 
relevant  to  all  three. 

§  633.  An  interlocutory  hearing  by  a  judge,  in  a  patent 
action  in  equity,  is  one  which  occurs  after  the  evidence 
relevant  to  the  validity  of  the  patent  and  its  infringement 
by  the  defendant,  has  been  taken,  and  before  the  case  is 
referred  to  a  master  to  take  and  state  an  account  of  profits 
and  damages.  The  final  hearing,  which  occurs  after  the 
master  has  taken  that  account  and  filed  his  report,  generally 
involves  nothing  but  the  correctness  of  that  report,  and  it 
therefore  may  appropriately  be  treated  in  the  chapter  on 
profits.  So  also,  the  preliminary  hearing,  which  occurs 
when  a  preliminary  injunction  is  applied  for,  may  properly 
be  discussed  in  the  chapter  on  injunctions.  The  interlocu- 
tory hearing  is  generally  the  pivotal  point  of  a  litigation. 
Where  it  results  in  the  success  of  the  defendant  and  conse- 
quent dismissal  of  the  bill,  it  becomes  a  final  hearing. 


1  Story's  Equity  Pleading,  Sec.       tions  611  and  826. 

612.  4  18  Statutes  at   Large,  Part  3, 

2  Story's  Equity  Pleading,  Sec.       Ch.  77,  Section  2,  p.  316. 

827.  3  Parker  v.  Hatfield,  4   McLean, 

3  Story's  Equity  Pleading.  Sec-      61.  1845. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  477 

§  634.  Questions  of  law,  in  equity  patent  cases,  are  to  be 
decided  according  to  the  relevant  rules  of  law  and  equity  in 
force  in  the  United  States  courts.  The  sources  of  those 
rules  are  the  statutes  of  the  United  States,  and  the  decisions 
of  the  United  States  Supreme  Court  and  Courts  of  Appeals, 
and  Circuit  Courts,  and  those  decisions  of  the  chancellors 
of  England  which  were  made  before  the  adoption  of  the 
Constitution  of  the  United  States.  Later  decisions  of  Eng- 
lish courts  sometimes  indicate  what  the  law  is,  but  no  such 
decision  is  of  any  binding  authority  in  any  United  States 
court.  Where  such  a  decision  is  strictly  relevant  to  a  ques- 
tion at  bar,  and  is  supported  by  good  reasoning,  it  may  be 
followed  by  a  United  States  judge  ;  but  if,  as  is  frequently 
the  case,  it  refers  to  a  substantially  different  state  of  statute 
law  from  that  to  which  United  States  patent  cases  are  sub- 
ject, or  if  it  was  fallaciously  reasoned  out  by  the  judge  who 
delivered  it,  such  a  decision  may  properly  be  disregarded 
in  the  Federal  courts.  The  decisions  of  State  courts  fall  in 
the  same  category  in  this  respect  with  the  modern  English 
decisions,  except  in  cases  where  the  United  States  statutes 
direct  the  Federal  courts  to  follow  the  laws  of  the  several 
States.  In  those  cases,  the  State  laws  are  binding  on  the 
Federal  judges,  not  because  the  States  have  any  authority 
to  prescribe  rules  to  Federal  courts,  but  because  the  national 
legislature  has  adopted  those  particular  State  laws,  instead 
of  framing  and  enacting  corresponding  regulations  of  its 
own. 

Where  a  question  arises  to  which  no  direct  answer  can 
be  found  in  the  recognized  sources  of  the  law,  it  becomes 
the  duty  of  the  judge  to  deduce  a  proper  answer,  by  means 
of  just  reasoning,  from  the  general  principles  of  law,  of 
equity,  and  of  justice.  He  will  generally  find  assistance  in 
that  work  by  consulting  the  obiter  dicta  of  courts  and  the 
commentaries  of  text- writers ;  but  no  obiter  dictum,  and  no 
text-book  is  of  any  binding  authority.  The  points  of  law 
actually  decided  by  the  United  States  Supreme  Court  are 
generally  binding  on  all  other  United  States  courts,  regard- 


478  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

less  of  the  reasons  which  support  them.1  There  is  an 
exception  to  this  rule,  where  the  Supreme  Court  has  decided 
the  same  question  both  ways.  In  such  a  case,  the  last 
decision  governs,  if  it  expressly  overruled  the  first.2  If  it 
simply  ignored  the  first,  it  may  have  resulted  from  the  first 
decision  not  being  called  to  the  attention  of  the  justices 
who  rendered  the  second.  In  such  a  case  it  is  probably 
the  duty  of  a  circuit  court  to  follow  the  most  reasonable  of 
the  two  decisions,  regardless  of  seniority.  The  points  of 
law  actually  decided  by  the  Circuit  Court  of  Appeals  of  any 
circuit  are  binding  upon  all  the  circuit  courts  in  that  cir- 
cuit;3 and  the  same  force  was  formerly  ascribed,  and  may 
still  be  given,  to  the  points  of  law  actually  decided  by  any 
circuit  justice  or  circuit  judge  when  holding  circuit  court  in 
either  of  the  nine  circuits  of  the  United  States.4  And  the 
points  of  law  actually  decided  by  any  judge,  holding  any 
United  States  Circuit  Court,  are  followed  by  every  other 
judge  holding  any  United  States  Circuit  Court,  unless  they 
have  been  reversed  by  a  Circuit  Court  of  Appeals,  or  by 
the  Supreme  Court,  or  are  contrary  to  other  decisions  of  equal 
or  superior  dignity,  or  clearly  appear  to  be  erroneous.5  The 
points  of  law  spoken  of  in  this  section  include  the  construction 
given  to  letters  patent,  where  the  evidence  of  the  prior  art  and 
other  facts  relevant  to  that  construction  remain  unchanged, 

1  American  Middlings  Purifier  Rep.  500,  1888;  Kidd  v.  Ransom, 

Co.  v.  Christian,  3  Bann.  &  Ard.  44,  35  Fed.  Rep.  588,  1888;  Eastern 

1877;  Goodyear  Dental  Vulcanite  Paper  Bag  Co.  v.  Nixon,  35  Fed. 

Co.  v.  Davis,  3  Bann.  &  Ard.  116,  Rep.  752,  1888;  Consolidated  Roll- 

1877 ;  Green  «.  City  of  Lynn,  55  er  Mill  Co.  v.  Barnard  &  Leas 

Fed.  Rep.  518,  1893.  Mfg.  Co.  43  Fed.  Rep.  532,  1890; 

3  Tilghman  ®.  Proctor,  125  U.  S.  Zinsser  «.  Krueger,  45  Fed.  Rep. 

149,  1887.  574.  1891;  Enterprise  Mfg.  Co.  v. 

3  Edison  Electric    Light    Co.   t>.  Deisler,  46    Fed.    Rep.   854,    1891; 
Bloomingdale,    65  Fed.  Rep.  214,  Campbell  Mfg.  Co.  v.   Manhattan 
1894.  Ry.  Co.  49  Fed.  Rep.  935,   1892; 

4  Hawes  «.  Cook,  5  Off.  Gaz.  493,  Macbeth  v.  Gillinder,  54  Fed.  Rep. 
1874.  170,   1889;   Office  Specialty  Co.  v. 

6  Cary  «.  Lovell  Mfg.  Co.  31  Fed.       Winternight  Mfg.  Co.  67  Fed.  Rep. 
Rep.  345,  1887;  Rubber  Trimming      928,  1895. 
Co.  v.  Rubber  Comb  Co.  35  Fed. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  479 

as  well  as  the  rules  of  law  in  general.1  But  where  a  Circui  t  Court 
of  Appeals,  or  circuit  justice,  or  circuit  judge,  or  any  judge 
holding  circuit  court  has  decided  the  point  both  ways,  the  last 
of  those  decisions  is  the  one  which  is  to  be  regarded,  if  it 
expressly  reversed  the  first.8  If  it  simply  ignored  the  first,  the 
two  decisions  will  respectively  weigh  according  to  the 
weight  of  the  reasons  which  respectively  support  them. 

Adjudicated  cases  are  binding  precedents  in  the  law  only 
where  the  questions  of  law  involved  in  those  cases  were 
actually  submitted  for  decision  therein ;  and  such  a  sub- 
mission is  not  involved  in  raising  those  questions  in  the 
pleadings,  nor  in  controverting  them  in  the  evidence,  if  one 
party  or  the  other  abandons  those  questions  at  the  hearing.3 

§  635.  Questions  of  fact  depend  upon  the  evidence  in  the 
particular  cases  in  which  they  arise,  except  so  far  as  they 
depend  upon  matters  of  which  courts  take  judicial  notice. 
Questions  of  fact  in  patent  cases  often  require  for  their 
solution  a  severely  logical  process  of  reasoning  from  the 
testimony  in  the  record.  It  sometimes  occurs  that  the 
evidence  in  a  number  of  cases,  pending  in  a  number  of 
courts,  is  substantially  the  same.  Where  one  such  case 
has  been  carefully  argued  and  deliberately  decided  in  a 
circuit  court,  all  the  other  circuit  courts  follow  that 
decision,  unless  it  has  been  reversed  by  a  Circuit  Court  of 
Appeals  or  by  the  Supreme  Court.4  Many  of  the  earlier 

1  National  Box  &  Paper  Co.  v.  v.  Philadelphia,  30  Fed.  Rep.  625, 
American  Paper  Box  Co.  48  Fed.  1887;  Cary  «.  Mfg.  Co.  31  Fed.  Rep. 
Rep.  913,  1892;  Sessions  v.  Gould,  344,  1887;  Hancock  Inspirator  Co. 
60  Fed.  Rep.  755,  1894.  „.  Regester,  35  Fed.  Rep.  61,  1888; 

2  Brown  Mfg.  Co.  •».  Mast,  53  Fed.  Hammerschlag  Mfg.  Co.  v.  Spald- 
Rep.  582,  1892.  ing,  35  Fed.  Rep.  67,  1888;  Putnam 
.    3  Celluloid  Mfg.  Co.  v.  Tower,  26  v.  Bottle  Stopper  Co.  3«  Fed.  Rep. 
Fed.  Rep.  452,  1885.  235,   1889;    Simons    Mach.    Co.   v. 

4  Goodyear  Dental  Vulcanite  Co.  Knox,  39  Fed.  Rep.  702,  1889; 
«.  Willis,  1  Bann.  &  Ard.  570,  1874;  Thompson  v.  Donnell  Mfg.  Co.  40 
Putnam  v.  Yerrington,  2  Bann.  &  Fed.  Rep.  383, 1889;  National  Cash 
Ard.  241, 1876;  Rumford  Chemical  Register  Co.  v.  American  Cash  Reg- 
Works  v.  Hecker,  2  Bann.  &  Ard.  ister  Co.  47  Fed.  Rep.  217,  1891; 
360,  1876;  Searls  v.  Worden,  11  Fed.  Dixon- Woods  Co.  •».  Pfeifer,  51  Fed. 
Rep.  502,  1882;  American  Ballast  Rep.  292,  1892;  New  Departure 
Log  Co.  v.  Cotter,  11  Fed.  Rep.  728,  Bell  Co.  v.  Hardware  Specialty  Co. 
1882;  Matthews  «.  Mfg.  Co.  19  Fed.  72  Off.  Gaz.  1351,  1895. 
Rep.  321,  1884;  Worswick  Mfg.  Co. 


480  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

decisions  speak  of  this  rule  as  the  doctrine  of  comity.  But 
Judge  DALLAS  has  held  that :  "  In  patent  causes  conclusive 
effect  is  accorded  by  each  of  the  circuit  courts  of  the  United 
States  to  a  prior  judgment  of  any  other  of  them  wherever 
the  patent,  the  question,  and  the  evidence  are  the  same  in 
both  suits,  not  on  the  ground  of  comity  alone,  but  with  the 
practical  and  salutory  objecfof  avoiding  repeated  litigation 
and  conflicting  decrees  in  the  courts  of  the  several  dis- 
tricts." 1  Where  the  evidence  in  a  second  case  is  substan- 
tially different  from  the  evidence  in  the  case  first  decided, 
the  question  will  arise  whether  a  new  decision  is  required 
by  that  difference ;  and  a  new  decision  will  be  rendered 
where  justice  plainly  requires  that  the  difference  in  evidence 
should  produce  a  different  decision.2  But  the  Circuit 
Courts  of  Appeals  are  not  bound  by  circuit  court  decisions 
on  questions  of  fact,  even  on  the  same  evidence.3  Where 
questions  of  fact  in  patent  cases  have  been  decided  by  the 
Supreme  Court,  that  decision  is  conclusive  in  all  other 
patent  cases,  so  far  as  the  evidence  is  .substantially  identical 
with  that  before  the  Supreme  Court.4  And  where  questions 
of  fact  in  patent  cases  have  been  decided  by  a  Circuit  Court 
of  Appeals,  that  decision  is  likewise  conclusive  in  all  other 
patent  cases  in  the  circuit  courts.5  But  the  evidence  must 
be  taken  in  the  subsequent  cases,  and  cannot  be  imported 


1  Office  Specialty  Co.  •».  Winter-  American    Cash    Register    Co.  53 
night  Mfg.  Co.  67  Fed.  Rep.  929,  Fed.  Rep.  370,   1892;  Wanamaker 
1895.  v.  Enterprise  Mfg.  Co.  53  Fed.  Rep. 

2  Zinsser  v.  Krueger,  45  Fed.  Rep.  792,  1893. 

575,   1891;    Starling  v.  Weir  Plow  4  American    Middlings    Purifier 

Co.  49  Fed.  Rep.  639,  1891;  Barnes  Co.  v.  Christian,  3  Bann.  &  Ard.  44, 

Sprinkler  Co.  v.  Walworth  Mfg.  Co.  1877;  American  Bell  Telephone  Co. 

51  Fed.  Rep.  89,  1892;   Starling  v.  «.  Southern  Telephone  Co.  34  Fed. 

Weir  Plow  Co.  53  Fed.  Rep.  119,  Rep.   796,  1888;    Green  v.   City  of 

1892;  Pratt  v.  Sencenbaugh,  64  Fed.  Lynn,  55  Fed.  Rep.  518,  1893. 

Rep.  781,  1893;  Pratt  v.  Wright,  65  5  Edison    Electric    Light  Co.  v. 

Fed.  Rep.  99,  1890.  Philadelphia  Trust  Co.  60  Fed.  Rep. 

3  National  Cash  Register  Co.  v.  397,  1894. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  481 

from  the  record  of  the  Supreme  Court  or  of  the  Circuit 
Court  of  Appeals.1 

§  636.  The  evidence  which  a  complainant  is  required  to 
produce  to  support  his  bill  in  an  action  in  equity,  is  the 
same  as  that  which  a  plaintiff  in  an  action  at  law  is  required 
to  introduce  in  support  of  his  declaration ;  except  that  in 
an  action  in  equity  the  complainant  must  introduce  evidence 
to  excuse  his  delay  in  filing  his  bill,  where  a  long  delay  to 
file  it  occurred  after  the  infringement  took  place ;  and 
except  that  till  after  the  interlocutory  hearing,  he  need 
introduce  no  evidence  relevant  to  profits  or  to  damages  ; 
and  except  that  the  complainant's  evidence  of  the  doings 
of  the  defendant  will  have  to  be  equal  to  the  testimony  of 
two  witnesses,  in  order  to  meet  the  denial  of  the  defend- 
ant's answer,  where  the  bill  required  the  answer  to  be  made 
under  oath,  and  where  a  denial  was  made  under  oath. 
When  the  complainant  has  some  evidence  tending  to  show 
the  character  of  the  defendant's  doings,  and  that  those 
doings  infringe  the  complainant's  patent,  a  court  of  equity 
has  power  to  order  the  defendant  to  allow  the  complainant, 
or  some  expert  or  other  person  representing  him,  to  inspect 
the  defendant's  doings  for  fuller  accuracy  of  knowledge.2 
But  this  power  will  not  be  exercised,  where  a  bill  is  filed 
upon  a  conjecture  of  infringement  with  the  hope  of  obtain- 
ing evidence  to  that  effect  afterward.3 

§  637.  The  evidence  which  is  required  to  support  either 
of  the  twenty-seven  defences  which  are  common  to  actions 
at  law  and  actions  in  equity,  is  the  same  in  both  those  forms 
of  proceeding.  Of  the  two  defences  which  are  peculiar  to 
equity,  that  of  non-jurisdiction  is  one  which  seldom  or  never 
requires  any  evidence  to  support  it ;  and  laches  is,  prima 
fade,  supported  by  the  fact  of  the  long  lapse  of  time  which 


1  Green  ».  City  of  Lynn,  55  Fed.  Gaz.  511,  1888. 

Rep.  519,  1893.  8  Dobson  «.  Graham,  49  Fed.  Rep. 

2  Diamond  Match  Co.  t>.  Oshkosh  17,  1889  ;  Stokes  Bros.  Mfg.  Co.  «. 
Match  Works,  63  Fed.  Rep.  984,  Heller,  56  Fed.  Rep.  298, 1893. 
1894;    Wilson  «.   Keeley,    43  Off. 


482  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

is  deducible  from  the  complainant's  proofs,  where  such  a 
defence  has  any  foundation  at  all.  AVhere  the  complainant 
introduces  evidence  to  excuse  the  delay,  it  may  be  necessary 
for  the  defendant  to  negative  that  evidence  by  other  proof, 
or  to  prove  facts  which  show  the  complainant's  excuse  to 
be  invalid  or  insufficient. 

§  638.  Testimony  in  actions  in  equity  for  infringements 
of  patents  is  taken  wholly  by  depositions  in  writing,  except 
in  a  few  districts,  where,  in  pursuance  of  local  rules  of 
court,  it  may,  by  the  consent  of  both  parties,  be  taken  orally 
in  open  court.  Where  testimony  is  taken  by  depositions  in 
writing,  counsel  have  sometimes  yielded  to  temptation  to 
take  immaterial  or  otherwise  inadmissible  evidence,  and  to 
prolong  examinations  beyond  useful  bounds.  Indeed  this 
practice  has  grown  to  be  such  a  drain  upon  the  pockets  of 
parties,  and  such  a  burden  upon  the  minds  of  judges,  that 
one  of  the  most  experienced  and  distinguished  of  the  latter 
has  taken  occasion  to  administer  to  the  abuse  a  deserved 
condemnation,  saying  of  a  case  not  worse  than  many  others  : 
"  This  record  is  a  sample  of  the  expensive  practice  which 
now  prevails  in  patent  cases,  of  stuffing  the  record  with 
prolix  cross-examinations  and  irrelevant  testimony."1 

§  639.  Depositions  may  be  taken  by  a  commission,  upon 
interrogatories  filed  by  the  party  taking  it  out,  and  upon 
cross-interrogatories  filed  by  the  adverse  party.2  If  either 
party  so  requires,  all  the  depositions  in  a  case  must  be  taken 
orally,  in  writing,  before  an  examiner,  in  the  presence  of 
the  parties  or  their  agents,  by  their  counsel  or  solicitors, 
and  in  the  method  of  examination  and  cross-examination 
used  in  common-law  courts.3  An  examiner  may  take  testi- 
mony in  other  districts  than  that  wherein  the  case  is  pend- 
ing ;  and  the  United  States  Circuit  Court  for  any  other 
district  has  power  to  issue  a  subposna,  commanding  a  person 
living  in  its  district  to  appear  and  testify  before  the  exam- 
iner who  is  discharging  his  duties  therein  ;  and  such  court 


1  Ecaubert  v.  Appleton,  67  Fed.          2  Equity  Rule  67. 
Rep.  924,  1895.  3  Equity  Rule  67. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  483 

also  has  power  to  punish  such  a  person  for  refusing  to  obey 
such  a  subpoena  ;  and  such  a  subpoena  may  issue  from  the 
clerk's  office  without  any  special  order  of  court.1  Where 
depositions  are  taken  orally  in  writing  before  an  examiner, 
the  court  may,  on  motion  of  either  party,  assign  a  time 
within  which  the  complainant  shall  take  his  evidence  in 
support  of  the  bill ;  and  a  time  thereafter,  within  which  the 
defendant  shall  take  his  evidence  in  defence  ;  and  a  time 
thereafter,  within  which  the  complainant  shall  take  his 
evidence  in  reply.2  Depositions  may  also  be  taken  in  equity 
cases,  in  the  method  heretofore  explained  for  taking  depo- 
sitions in  actions  at  law,  whenever  the  same  facts  exist  to 
justify  that  mode  of  practice.3  And  depositions  may  also 
be  taken  in  the  mode  prescribed  by  the  laws  of  the  State  in 
which  the  court  is  held  wherein  those  depositions  are  to  be 
used.4 

It  is  to  be  observed,  relevant  to  all  methods  of  taking 
depositions,  that  each  item'  of  the  procedure  which  is  pre- 
scribed by  rule  or  by  statute,  must  be  strictly  followed  in 
every  case,  except  where  it  is  varied  or  waived  by  a  written 
stipulation  of  the  parties.  Stipulations  may  also  provide 
for  an  enlargement  of  time  for  taking  depositions  ; 5  which 
time,  unless  enlarged  by  a  stipulation  or  by  an  order  of 
court,  covers  three  calendar  months  and  no  more.6  But 
depositions  taken  out  of  proper  time  will  be  considered  on 
the  hearing,  unless  there  is  a  prior  successful  motion  to 
suppress  them.7 

§  640.  Depositions  taken  in  any  other  case  may  be  used 
in  any  action  in  equity,  if  each  party  therein  was  a  party  to 
the  action  in  which  they  were  taken,  or  is  in  privity  with  a 


1  Johnson    Street    Rail.    Co.    v.  *  27  Statutes  at  Large,  Chap.  14, 
North   Branch    Steel  Co.  48  Fed.  p.  7. 

Rep.  192.  1892.  6  Equity  Rule  67. 

2  Equity  Rule  67.  •  Equity  Rule  69;  Guaranty  Trust 

3  Stegner  v.  Blake,  36  Fed.   Rep.  Co.  v.  Green  Cove  Railroad,  139  U. 
184,  138S;  Arnold  v.  Cheseb'rough,  8.  145,  1891. 

35  Fed.  Rep.  16,  1888;  Equity  Rule  7  Matthews   «.   Spangenberg,    19 

68;  Section  535  of  this  book.  Fed.  Rep.  824,  1882. 


484  -ACTIONS   IN   EQUITY.  [CHAP.  XX. 

party  to  that  action,  and  if  the  court  grants  a  motion  to  use 
them.1  But  where  either  party  in  the  new  action  was  not  a 
party  to  the  former  one,  and  is  not  in  privity  with  any  party 
thereto,  no  deposition  taken  in  the  former  suit  can  be  used 
in  the  new  one  ;  for  no  deposition  can  be  read  against  a 
party,  who  could  not  read  it  in  his  favor  if  it  were  favorable 
to  him.8 

§  641.  Documentary  evidence  is  generally  introduced 
before  the  examiner,  within  the  same  time  that  the  oral  tes- 
timony is  required  to  be  taken ;  and  that  is  the  necessary 
course  where  documents  require  to  be  proved  by  oral  testi- 
mony. But  documents  which  prove  themselves,  may  be 
introduced  on  the  hearing  without  having  been  put  in 
evidence  before  the  examiner,  unless  such  a  practice,  in  a 
particular  case,"would  operate  as  a  surprise  upon  the  oppo- 
site party.3  And  documents  which  require  to  be  proved 
may  be  introduced  on  or  even  after  the  hearing,  with  the 
consent  of  the  court.4  Where'  a  document  thought  by  a 
party  to  be  material  to  his  case,  is  known  to  be  in  the  pos- 
session of  the  opposite  party,  its  production  in  court  may 
be  compelled  by  a  subpoena  duces  tecum? 

§  642.  A  jury  of  not  less  than  five  and  not  more  than 
twelve  persons  may  be  empannelled  by  any  United  States 
Circuit  Court,  when  sitting  in  equity  for  the  trial  of  a  pat- 
ent cause,  for  the  purpose  of  submitting  to  them  such 
questions  of  fact  in  the  case  as  the  court  shall  deem  it 
expedient  to  submit  ;  and  the  verdict  of  such  a  jury  is 
treated  in  the  same  manner  and  with  the  same  effect  as  in 
the  case  of  issues  sent  from  chancery  to  a  court  of  law  and 


1  Clow  v.  Barker,   36  Fed.  Rep.  115,  1883. 

692,  1888.  4  Mast,  Foos  &  Co.  ®.  Windmill 

2  Dale  v.  Rosevelt,  1  Paige  (N.  Y.)  &  Pump  Co.  68  Fed.  Rep.  224, 1895. 
35,  1828;  Paynes  v.  Coles,  1   Mun-  5  Edison  Electric  -Light    Co.    ». 
ford  (Va.),  394,    1810;    Barker    v.  United  States  Electric  Lighting  Co. 
Shoots,  18  Fed.  Rep.  652,  1884.  45  Fed.  Rep.  55,  1891. 

3  Knapp  «.  Shaw,  .15  Fed.  Rep. 


CHAP.  XX.]  ACTIONS    IN   EQUITY.  485 

returned  with  such  findings.1  Therefore  such  a  verdict  is 
only  advisory,  and  never  conclusive  upon  the  court.  If  the 
judge  disagrees  in  opinion  with  the  jury  relevant  to  the 
questions  of  fact  covered  by  the  verdict,  he  may  enter  a 
decree  contrary  thereto.2  But  the  regular  course  of  pro- 
ceeding in  such  a  case  is  to  enter  a  decree  in  accordance 
with  the  verdict,  unless  the  party  against  whom  it  was 
found  moves  the  court  for  a  new  trial.  A  new  trial  in  such 
a  case  is  granted  or  refused  according  as  the  judge  thinks 
the  verdict  was  right  or  was  wrong ;  and  without  special 
regard  to  any  errors,  or  freedom  from  errors,  which  char- 
acterized the  admission  or  rejection  of  evidence  on  the 
trial,  or  the  instructions  which  were  given  or  those  which 
were  refused  by  the  judge.  Where  a  new  trial  is  refused, 
and  a  decree  is  entered  in  accordance  with  the  verdict,  if 
the  defeated  party  would  take  the  case  to  the  Circuit  Court 
of  Appeals  for  review,  he  must  do  so  on  appeal  from  the 
decree,  and  not  upon  a  writ  of  error  as  from  a  judgment 
entered  upon  a  verdict  in  an  action  at  law.  In  a  properly 
prepared  case,  the  Circuit  Court  of  Appeals  will  decide 
whether,  on  the  whole,  the  decree  was  right  or  was  wrong  ; 
but  it  will  not  pass  upon  the  correctness  or  incorrectness  of 
the  rulings  of  the  judge  at  the  jury  trial.  Therefore  the 
evidence  taken  at  the  jury  trial  should  be  preserved,  if 
there  is  any  intention  to  take  the  case  to  the  Circuit  Court 
of  Appeals,  but  no  bill  of  exceptions  in  the  case  is  necessary 
or  is  proper.3 

§  643.  A  master  in  chancery  may  be  deputed  by  a  Circuit 
Court  to  try  any  question  of  fact  in  a  patent  case,  and  to 
report  his  conclusion  thereon.4  But  such  a  report  is 
advisory  only,  and  no  decree  will  be  entered  upon  it,  if 
either  party  can  convince  the  judge  •  that  it  was  wrong. 
Exceptions  to  the  master's  report  are  the  proper  means  of 

1  18  Statutes  at  Large.   Part  3.          *  Watt  v.  Starke,   101  U.  8.  247, 
Chap.  77,  Section  2, -p.  316;  Gray  t>.       1879. 

Halkyard,  28  Fed.  Rep.  854,  1886.  4  Parker  v.  Hatfleld,  4  McLean. 

2  Silsby  9.  Foote,   1   Blatch.   545,      61, 1845. 
and  20  Howard,  290,  1857. 


486  ACTIONS    IN   EQUITY.  [CHAP.  XX. 

appeal  from  his  conclusion.  If  on  such  exceptions,  the 
judge  concludes  that  the  master  was  wrong  in  any  respect, 
he  may  send  the  case  back  to  him,  with  directions  to  make 
a  new  report,  and  with  prescriptions  of  new  criteria  by 
which  to  make  it ;  *  or  he  may  proceed  to  try  the  questions 
of  fact  himself,  if  that  course  appears  to  be  more  con- 
venient. The  rules  of  practice  which  regulate  the  taking 
of  evidence  by  masters  in  chancery,  and  regulate  the  hear- 
ings before  them,  and  the  filing  of  exceptions  to  their 
reports,  are  the  same,  when  they  are  directed  to  ascertain 
the  truth  relevant  to  such  questions  of  fact  as  novelty  or 
infringement,  that  they  are  in  the  more  common  cases 
wherein  they  are  directed  to  take  and  state  an  account  of 
profits  and  damages. 

§  644.  An  interlocutory  decree,  in  an  equity  patent  case, 
is  a  decree  which  adjudges  that  the  patent  sued  upon  is 
valid  ;  and  that  the  defendant  has  infringed  it ;  and  that  a 
master  in  chancery  be  directed  to  take  and  report  an  account 
of  the  profits  which  the  defendant  realized  from  that 
infringement,  and  of  the  damages  which  the  complainant 
sustained  by  reason  thereof ;  and  sometimes  that  the 
defendant  be  permanently  enjoined  from  further  infringe- 
ment.2 

Where  only  part  of  the  claims  in  suit  are  found  valid  and 
infringed,  such  a  decree  is  confined  to  that  part ; 3  and 
such  a  decree  is  not  entered  in  a  case  where  the  infringe- 
ment is  below  the  dignity  of  the  court,  but  bills  in  such 
cases  are  dismissed  without  costs.4  Judicial  destruc- 
tion of  infringing  articles,  is  a  feature  of  the  patent  laws  of 
England,  but  is  not  justified  by  any  existing  law  of  the 
United  States ;  though  that  severe  measure  has  been 


1  Cawood  Patent,  94  U.  S.   7D8,  21,  1892. 

1876.  sghute  v.   Morley  Co.   64  Fed. 

2  Dudley  E.  Jones  Co.  v.  Hunger  Rep.  868,  1894. 

Mfg.  Co.  50  Fed.  Rep.  785,  1892;  4  Wickwire  v.  Wire  Fabric  Co.  41 

Richmond  «.  Atwood,  52  Fed.  Rep.  Fed.  Rep.  36,  1889. 


CHAP.    XX.]  ACTIONS   IN    EQUITY.  487 

approved  in  one  obiter  dictum,1  and  unsuccessfully  invoked 
in  one  adjudicated  case.2 

§  644<z.  An  appeal  from  an  interlocutory  decree  which 
grants,  continues,  refuses,  dissolves  or  refuses  to  dissolve 
an  injunction,  may  be  taken  to  the  Circuit  Court  of  Appeals, 
for  the  circuit  in  which  that  decree  was  rendered,  at  any 
time  within  thirty  days  from  the  entry  of  the  decree.3  Such 
an  appeal  will  secure  a  review  of  that  part  of  the  decree 
which  refers  to  an  injunction  ;  and  to  that  end,  the  Circuit 
Court  of  Appeals  will  decide  the  questions  of  validity  and 
infringement,  and  whatever  other  questions  underlie  the 
question  of  the  justice  of  an  injunction.4  If  the  decision 
on  either  of  these  two  fundamental  questions  is  adverse  to 
the  complainant,  it  will  practically  vacate  any  part  of  an 
interlocutory  decree  which  directs  an  accounting  of  profits 
and  damages.  But  no  appeal  can  be  taken  by  a  defendant 
from  an  interlocutory  decree  which  directs  an  accounting  of 
profits  and  damages,  but  does  not  order  an  injunction. 
And  where  an  interlocutory  decree  directs  an  accounting  of 
profits  and  damages,  and  orders  an  injunction  on  only  part 
of  the  claims  in  suit,  and  where  the  defendant  thereupon 
appeals,  the  court  will  not  consider  that  part  of  the  decree 
which  was  favorable  to  him.5 

§  645.  A  petition  for  a  rehearing  may  be  filed  at  any  time 
before  the  end  of  the  term  at  which  the  final  decree  in  the 
case  is  entered  and  recorded.6  Such  a  petition  may  be 
based  upon  an  apparent  error  of  the  judge  in  deciding  upon 
the  case  as  it  was  presented  to  him  in  the  record  ;  or  it  may 


1  Birdsell  v.    Shaliol,    112  U.  S.  28,  1892;  Consolidated  Cable  Co.  ». 
487,  1884.  Pacific  Ry.  Co.  58  Fed.  Rep.  226, 

2  American  Bell  Telephone  Co.  v.  Ib93;  Columbus  Watch  Co.  v.  Rob- 
Kitsell,  35  Fed.  Rep.  521,  1888.  bins,  64  Fed.  Rep.  397,  1894;  Kil- 

3  28  Statutes  at  Large,  Chap.  96,  mer  Mfg.  Co.  v.  Griswold,  67  Fed. 
p.  666.  Rep.  1017,  1895. 

4  Dudley  E.  Jones  Co.  «.  Hunger,  5  Eagle  Lock  Co.  v.  Corbin  Loc  k 
Mfg.  Co.  50  Fed.  Rep.  785,  1892 ;  Co.  64  Fed.  Rep.  789,  1894. 
Richmond  v.  Atwood,  52  Fed.  Rep.  6  Equity  Rule  88. 


488  .   ACTIONS   IN   EQUITY.     ,  [CHAP.  XX. 

be  based  on  facts  which  were  discovered  after  the  entry  of 
the  decree  which  the  petition  asks  to  have  reconsidered. 
These  two  kinds  of  rehearing  are  quite  different  from  each 
other,  not  only  in  respect  of  the  grounds  upon  which  they 
are  based,  but  also  in  respect  of  the  methods  by  which  they 
are  obtained. 

§  646.  A  rehearing  for  matter  apparent  on  the  face  of  the 
record  may  be  applied  for  by  a  petition  signed  by  counsel, 
and  stating  the  ground  upon  which  the  rehearing  is  prayed.1 
That  ground  must  be  sufficient  to  convince  the  judge  that 
the  decree  was  perhaps  erroneous.2  In  order  to  do  that,  it 
is  necessary  to  point  out  some  particular  misapprehension 
of  the  law,  or  some  particular  mistake  in  respect  of  the 
evidence,  into  which  the  judge  was  unfortunate  enough  to 
fall.3  Such  a  misapprehension  may  be  established  by  show- 
ing that  since  the  case  sought  to  be  reheard  was  decided, 
the  Appellate  Court  has  settled  or  clarified  the  law  so  as  to 
give  it  a  different  character  from  that  which  it  was  then 
understood  to  have  ; 4  but  such  a  mistake  cannot  be  estab- 
lished by  showing  that  the  judge  omitted,  in  his  opinion,  to 
review  all  the  evidence  in  the  case.5  It  is  useless  to  ask 
for  a  rehearing  of  this  kind  on  the  general  ground  that  the 
decision  is  thought  by  counsel  to  be  wrong.6  But  a  rehear- 
ing may  be  spontaneously  ordered  by  the  court  when  the 
judge  begins  to  doubt  his  decision.7 

§  647.  A  rehearing  on  account  of  newly  discovered  evi- 
dence must  be  applied  for  as  soon  as  possible  after  its 


1  Equity  Rule  88.  51,  1884;  Spill  v.  Celluloid  Mfg.  Co. 

2  American  Diamond  Rock  Bor-  21  Fed.  Rep.  640, 1884;  Campbell «. 
ing  Co.  v.  Sheldon,   18  Blatch.  50  New  York,  35  Fed.  Rep.  504,  1888. 
1880.  5Timken  v.  Olin.  37  Fed.  Rep. 

3  Everest  v.  Oil  Co.  22  Fed.  Rep.  207,  1888. 

252,  1884:  Railway  Mfg.  Co.®.  Rail-  6  Tufts  t>.  Tufts,  3  Woodbury  & 

road  Co.   26  Fed.  Rep.  411,  1886;  Minot,  429,  1847;  Gage  e.  Kellogg, 

Coupe  v.  Weatherhead,  37  Fed.  Rep.  26  Fed.  Rep.  243,  1886. 

16,   1888;  Detwiller  v.   Bosler,  58  7  Brown  Mfg.   Co.  ®.   Deere,  51 

Fed.  Rep.  250,  1893.  Fed.  Rep.  229,  1892. 

4  Wooster  ».  Handy,  21  Fed.  Rep. 


CHAP.    XX.]  ACTIONS   IN    EQUITY.  489 

discovery l  by  a  petition,  verified  by  the  oath  of  the  appli- 
cant or  of  some  other  person,2  and  stating  the  nature  of  the 
alleged  newly  discovered  evidence,  and  that  it  was  not 
known  to  the  petitioner  till  after  the  decree  was  rendered,3 
and  also  what  diligence  was  exercised  in  searching  therefor 
prior  to  that  time,4  and  praying  for  leave  to  file  a  supple- 
mental bill  in  the  nature  of  a  bill  of  review,  and  for  a  rehear- 
ing of  the  cause  at  the  time  when  the  issues  raised  by  that 
bill  shall  be  ready  for  hearing.5  The  function  of  such  a  bill 
is  to  furnish  a  foundation  in  the  pleadings  for  evidence  on 
both  sides  of  the  new  issues  of  fact  to  determine  which,  the 
rehearing  is  granted.  When  such  a  petition  is  filed,  it  must 
be  supported  by  affidavits  of  the  witnesses  who  are  expected 
to  testify  to  the  newly  discovered  facts  which  are  sought  to 
be  brought  into  the  case,6  and  also  by  affidavits  showing 
that  those  facts  were  not  discovered  by  the  petitioner  till 
after  the  former  hearing,7  and  could  not,  with  reasonable 
diligence,  have  been  discovered  sooner  than  they  were.8 
Such  a  petition  may  be  answered  by  counter  affidavits 
tending  to  show  that  part  or  all  of  the  statements  in  the 
petitioner's  affidavits  are  untrue.9  To  grant  the  prayer  of 
the  petition,  the  court  must  be  satisfied  that  the  applicant's 
affidavits  are  probably  true,10  and  clearly  material,11  and  that 
the  facts  they  set  forth  were  not  known  to  the  petitioner  at 
the  time  of  the  former  hearing,  and  could  not  with  reason- 

1  Blandy  v.  Griffith,  6  Fisher,  435,  «   India    Rubber    Comb    Co.    v. 
1873.  Phelps,  4  Fisher,  317.  1870;  Hitch- 

2  Equity  Rule  88.  cock  v.   Tremaine,  9   Blatch.  551, 

3  Foote  ®.  Stein,  35  Fed.  Rep.  205,  1872;  Barker  v.  Stowe,  4  Bann.  & 
1888.  Ard.  405,  1878;  Willimantic  Linen 

4  Allis  v.  Stowell,  5  Bann  &,  Ard.  Co.  v.  Clark  Thread  Co.  24  Fed. 
459,  1880;  New  York  Filter  Co.  t>.  Rep.  799,  1885. 

Filter  Co.  62  Fed.  Rep.  582,  1894.  9  Blandy  «.  Griffith,  6  Fisher,  485, 

6  Dexter  t>.  Arnold,  5  Mason,  310,  1873. 

1829;  Daniell's  Chancery  Practice,  10  Munson  v.  New  York,  11  Fed. 

1537.  Rep.  72,  1882;  New  York  Sugar  Co. 

6  Reeves  e.  Keystone  Bridge  Co-  v.  Sugar  Co.  35  Fed.  Rep.  217, 1888. 
2  Bann.  &  Ard.  259,  1876.  n  Reeves  «.  Keystone  Bridge  Co. 

7  Reeves  v.  Keystone  Bridge  Co.  2  Bann.  &  Ard.  259,  1876. 
2  Bann.  &  Ard.  256,  1876. 


490  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

able  diligence  have  been  discovered  prior  to  that  event ; : 
except  that  the  last  of  these  four  points  is  not  required  to 
be  shown,  where  it  is  shown  that  the  other  party  knew,  at 
the  time  of  the  decree,  of  the  fact  which  is  sought  to  be 
brought  into  the  case  on  a  rehearing.2 

Rehearings  will  not  be  granted  to  enable  parties  to  search 
for  further  evidence,3  nor  to  strengthen  their  expert  testi- 
mony,4 nor  to  amend  their  pleadings  so  as  to  make  certain 
evidence  admissible,  which  was  taken  before  the  former 
hearing,  and  was  disregarded  thereon,  because  not  sup- 
ported by  any  pleading  ; 5  nor  to  produce  cumulative  evidence 
on  questions  of  fact  which  were  in  issue  at  the  former  hear- 
ing ; 6  nor  to  correct  errors  of  management  committed  by 
the  petitioner's  counsel.7  And  no  appeal  lies  from  a  deci- 
sion of  a  Circuit  Court  granting  or  refusing  any  rehearing.8 

§  648.  A  supplemental  bill  in  the  nature  of  a  bill  of  review 
should  state  the  newly  discovered  facts  upon  which  it  is 
based,  and  should  pray  that  the  cause  may  be  heard  with 
respect  to  the  new  matter,  at  the  same  time  that  it  is  reheard 
upon  the  original  bill,  and  that  the  party  who  files  the  sub- 
ordinate bill  may  have  such  relief  as  the  nature  of  his  case 
requires.  The  proceedings  upon  a  bill  of  this  description 
are  the  same  as  those  upon  original  bills  in  general.9  No 
order  for  a  rehearing,  made  after  an  interlocutory  decree, 
and  while  an  account  of  profits  and  damages  is  being  taken 
by  a  master  in  chancery,  will  stop  the  taking  of  that  account ; 
unless  the  court  enters  a  special  order  directing  the  master 

1  Prevost  V.  Gratz,  1  Peters'  Cir-      6  Fisher  07,  1872. 

cuit  Court  Reports,  364, 1816;  Baker  6  Blandy  v.  Griffith,  6  Fisher.  435, 

v.   Whiting,    1    Story,    234,    1810;  1873;  Pf ansehmidt ».  Mercantile  Co. 

Reeves  v.  Keystone  Bridge  Co.  2  32  Fed.  Rep.  667,  1887. 

Bann.   &  Ard.  258,  1876;  Page  v.  7  Ruggles  v.  Eddy,  HBlatch.  524, 

Telegraph  Co.  18  Blatch.  122,  1880.  1874 ;  Colgate  v.  Telegraph  Co.  19 

2  Jonathan    Mills    Mfg.    Co.    «.  Fed.  Rep.  828,  1884;  Pittsburg  Re- 
Whitehurst,  60  Fed.  Rep.  81,  1894.  duction  Co.    v.  Aluminum  Co.    64 

3  Munson  v.  New  York,  11  Fed.       Fed.  Rep.  128,  1894. 

Rep.  72,  1882.  8  Roemer  v.  Bernheim.  132  U.  S. 

4  Hitchcock  ».  Tremaine,5  Fisher,       106,  1889. 

538,  1872.  9    Daniell's    Chancery   Practice, 

5  American  Saddle  Co.  v.  Hogg,       1537. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  491 

to  suspend  proceedings  therein.1  And  where  a  rehearing 
results  in  a  reversal  of  an  interlocutory  decree,  which  has 
been  entered  in  favor  of  a  complainant,  and  results  also  in 
a  dismissal  of  the  complainant's  bill ;  that  dismissal  will  be 
without  prejudice  to  the  use,  in  any  subsequent  accounting, 
of  the  evidence  which  may  have  been  taken  by  the  master.2 
And  the  decree  ordering  that  dismissal  will  give  costs  to  the 
complainant  for  the  litigation  prior  to  the  granting  of  the 
rehearing ;  and  will  give  costs  to  the  defendant  for  the 
litigation  which  occurred  after  that  event.3 

§  649.  A  final  decree  will  be  entered  in  favor  of  the  defend- 
ant, where  a  demurrer  to  the  whole  bill  is  sustained  on  a 
point  which  is  not  cured  by  amendment ;  or  where  a  plea 
to  the  whole  bill  is  sustained  on  an  argument,  and  is  there- 
upon replied  to,  and  is  found  to  be  true  on  the  trial ;  or 
where  either  of  the  numerous  defences  which  may  be  made 
in  an  answer,  and  which  apply  to  the  whole  bill,  are  estab- 
lished at  an  interlocutory  hearing.4  And  final  decrees  will 
be  entered  in  favor  of  complainants,  when  their  bills  have 
successfully  run  the  gauntlet  of  demurrers,  pleas,  answers, 
interlocutory  hearings,  petitions  for  rehearings,  supple- 
mental bills  in  the  nature  of  bills  of  review,  accounting 
before  a  master,  exceptions  to  the  master's  report,  and  final 
hearings,  through  which  original  bills  in  patent  cases  may 
regularly  be  caused  to  pass.  The  last  three  parts  of  this 
series  of  proceedings  are  explained  in  the  chapter  on  profits, 
and  the  others  have  already  been  outlined  in  this.  Assum- 
ing therefore,  that  a  final  decree  has  already  been  entered 
for  the  complainant  or  the  defendant,  and  that  the  costs 
have  been  adjusted  and  taxed  according  to  law,5  it  is  now 


1  Daniell's  Chancery  Practice,  6  Sections  543  to  549  of  this  book; 

1467.  Wooster  v.  Handy,  23  Fed.  Rep.  49, 

3  Campbell  v.  New  York,  35  Fed.  1885;  Spill  0.  Mfg.  Co.  28  Fed.  Rep. 

Rep.  504,  1888.  870,  1886;  Hill  v.  Smith,  32  Fed. 

3  Hake  v.  Brown.44  Fed.  Rep.283,  Rep.  753,  1887;  Ryan  v.  Gould,  32 
1890.                                                      .  Fed.    Rep.  754,    1887;    New  York 

4  Richmond  v.  Atwood,  52  Fed.  Belting  Co.  ®.  Rubber  Co.  32  Fed. 
Rep.  21, 1892.  Rep.  755,  1887. 


492  ACTIONS    IN   EQUITY.  [CHAP.  XX. 

convenient  to  delineate  the  further  proceedings  to  which 
the  defeated  party  may  resort.  These  are  of  two  kinds : 
bills  of  review,  and  appeals. 

§  650.  A  bill  of  review  is  the  proper  means  of  securing  a 
reconsideration  of  a  final  decree,  after  the  expiration  of  the 
term  at  which  it  was  entered.1  Such  bills  are  of  two  sorts  : 
those  filed  to  correct  errors  apparent  on  the  face  of  the 
pleadings  or  decree  ;2  and  those  filed  to  introduce  evidence 
of  facts  which  occurred  or  were  discovered  after  the  decree 
was  entered.3  In  order  to  secure  favorable  action  on  such 
a  bill,  the  petitioner  must  first  pay  to  the  opposite  party, 
the  amount  of  the  decrees  which  he  seeks  to  have  reversed 
or  modified,  unless  the  court  releases  him  from  that  neces- 
sity. But  the  court  will  release  him  if  he  is  unable  to  pay  ;* 
and  will  probably  do  so  where  the  opposite  party  is  insol- 
vent, if  the  petitioner  will  give  good  security  for  the  money 
decreed,  or  will  deposit  that  money  in  court.5 

§  651.  A  bill  of  reyiew,  to  correct  errors  apparent  on  the 
pleadings  or  decree,  may  be  filed  without  leave  of  court,6 
but  no  such  bill  will  be  considered  or  acted  upon  by  the 
court,  unless  it  is  filed  within  the  same  time  after  the 
entry  of  the  decree,  as  that  provided  for  by  statute  relevant 
to  appeals ; 7  which  latter  time  is  at  present  six  months.8 
Nor  will  such  a  bill  be  entertained,  if  the  decree  which  it 
was  filed  to  correct,  was  entered  by  the  circuit  court, 
after  an  appeal  to  a  higher  court,  and  in  pursuance  of 
directions  contained  in  the  mandate  of  the  latter  tribunal.9 
In  considering  a  bill  of  review  of  this  sort,  the  court  will 
confine  its  examination  to  the  pleadings  and  decree  in  the 

1  Story's  Equity  Pleading,   Sec.          6  Ross    0.   Prentiss,   4    McLean, 

403.  106,  1846;  Story's  Equity  Pleading, 

2  Whiting  v.   The  Bank  of  the      Sec.  405. 

United  States,  13  Peters,  14,  1839.  7  Thomas  v.  Harvie's  Heirs,   10 

3  Story's  Equity  Pleading,   Sec.       Wheaton,   149,   1825;  McDonald  ». 

404.  Whitney,  39  Fed.  Rep.  467,  1889. 

4  Story's  Equity  Pleading,   Sec.  8  26  Statutes  at  Large,  Chap.  517, 
406.  Section  11, 

5  Griggs  v.  Gear,  3  Gilman  (Illi-  9  Southard  v.  Russell,  16  Howard, 
nois),  17,  1845.  570,  1853. 


CHAP.  XX.]  ACTIONS   IN  EQUITY.  493 

original  action;  for  no  bill  lies  to  correct  any  errors  of  fact 
which  were  made  in  examining  or  weighing  the  evidence 
upon  which  the  decree  was  based.1 

§  652.  A  bill  of  review,  filed  to  introduce  evidence  of  new 
facts  or  of  newly  discovered  facts,  cannot  be  filed  without 
leave  of  court.2  Where  the  case  sought  to  be  reviewed  has 
not  been  appealed,  the  application  for  leave  is  made  to  the 
court  which  rendered  the  decree  ;  but  where  the  case  has 
been  appealed  to  the  Circuit  Court  of  Appeals,  the  applica- 
tion must  be  presented  in  that  tribunal.3  If  that  court 
decides  that  the  leave  ought  to  be  granted,  it  will  return 
the  case  to  the  court  below,  with  directions  to  receive  and 
adjudicate  the  bill  of  review ; 4  and  thereafter  the  case  will 
proceed  in  the  lower  tribunal  much  as  it  would  have  done 
if  no  appeal  had  been  taken.  After  the  bill  of  review  has 
been  litigated  and  a  new  decree  entered,  an  appeal  will  lie 
to  the  Circuit  Court  of  Appeals  on  the  whole  case. 
The  mode  of  application  for  leave  to  file  such  a  bill,  is  by 
a  petition  stating  the  original  proceedings  and  the  new 
facts  pr  newly  discovered  facts  on  the  strength  of  which 
reversal  of  the  decree  is  prayed.5  The  petition  must  be 
supported  by  affidavits  stating  the  exact  nature  of  those 
facts,  in  order  that  the  court  may  judge  of  their  materiality 
and  sufficiency,  and  showing  that  they  occurred  after  the 
final  decree  was  entered,  or  if  they  occurred  before  that 
time,  that  they  were  not  discovered,  and  could  not  with 
reasonable  diligence  have  been  discovered  till  afterward.6 
Bills  of  review  of  this  sort  may  bo  filed  even  more  than  six 
months  after  the  entry  of  the  decree,  provided  they  are  filed 
within  a  reasonable  time  after  the  discovery  is  made,  upon 


1  Whiting  v.  Bank  of  the  United  4  Revised  Statutes,   Section  701; 
States,  13  Peters,  14,  1839;  Story's  Ballard  v.  Searles,  130  U.   8.  50, 
Equity  Pleading,  Section  407.  1888. 

2  Ross  v.  Prentiss,  4  McLean,  106,  5  Massie's    Heirs    v.    Graham's 
1846.  -Adm'rs,  3  McLean,  43,  1842. 

3  Roemer  v.   Simon,  2  Bann.   &  «  Story's  Equity  Pleading,   Sec- 
Ard.  72,  1875.  tions,  412,  413  and  414. 


494  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

which  they  are  based.1  Leave  to  file  such  a  bill  will  be 
granted,  in  a  proper  case,  whether  those  facts  relate  to 
issues  in  the  original  action,  or  relate  to  defences  which 
were  not  in  issue  therein  ; 2  but  it  will  not  be  granted  where 
the  facts  stated  in  the  petition  are  not  adapted,  or  are  not 
sufficient,  to  have  altered  the  decree  if  they  had  been 
before  the  court  on  the  hearing  ;3  nor  where-  those  facts 
could,  with  reasonable  diligence,  have  been  discovered 
before  the  decree  was  entered  ;4  nor  to  enable  the  petitioner 
to  introduce  evidence  to  impeach  the  character  of  the  wit- 
nesses upon  whose  testimony  the  decree  was  based ;  nor  to 
introduce  cumulative  testimony  on  a  point  litigated  and 
decided  at  the  hearing  ;  but  newly  discovered  corroberating 
evidence  in  writing,  may  furnish  a  foundation  for  such  leave.5 
After  a  bill  of  review  to  introduce  new  facts,  or  newly  dis- 
covered facts,  has  been  duly  filed,  the  opposite  party  may 
plead  or  answer  thereto,  and  thus  put  the  party  who  filed 
it,  to  the  proof  of  its  allegations.6  A  demurrer  to  a  bill  of 
this  sort  is  not  appropriate,  because  its  sufficiency  in  point 
of  law  must  be  passed  upon  before  it  can  be  filed. 

§  653.  A  bill  in  the  nature  of  a  bill  of  review,  differs 
from  a  bill  of  review  only  in  respect  of  the  legal  character 
of  the  complainant.  The  latter  bill  can  be  filed  by  either 
of  the  parties  to  the  decree  which  is  sought  to  be  reviewed, 
or  by  their  respective  privies  in  representation,  such  as 
heirs,  executors,  or  administrators  ;  but  the  former  is  re- 
quired-to  be  tiled,  where  privies  in  estate,  such  as  devisees 
or  assignees  of  an  original  party,  seek  to  secure  the  rever- 
sal or  modification  of  a  final  decree  after  the  expiration  of 
the  term  at  which  it  was  entered.7  Neither  of  these  sorts 

1  United  States    v.    Samperyac,       1829. 

Hemstead's  Circuit  Court  Reports,  4  Rubber  Co.  v.  Goodyear,  9  Wal- 

131,  1831.  lace,  806,  1869. 

2  Dexter  «.  Arnold,  5  Mason,  313,  5  Southards.  Russell,  16  Howard, 
1829;  United  States  v.  Samperyac,  569.  1853. 

Hemstead's  Circuit  Court  Reports,  6  Dexter  v.  Arnold,  5  Mason  309, 

131.  1833;  Story's  Equity  Pleading,  1829. 

Sections  415  and  416.  7  Story's  Equity  Pleading,   Sec- 

3  Dexter  «.  Arnold,  5  Mason,  313,  tion  409. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  495 

of  bills  is  to  be  confounded  with  a  supplemental  bill  in  the 
nature  of  a  bill  of  review.  That  is  still  another  variety, 
and  its  character  and  operation  have  already  been  outlined.1 

§  654.  An  appeal  to  the  Circuit  Court  of  Appeals  is 
demandable  from  the  final  decree  of  any  United  States  Cir- 
cuit Court,  in  any  case  arising  under  the  patent  laws,  pro- 
vided it  is  taken  within  six  months  after  the  entry  of  the 
decree;2  unless  the  decree  is  only  for  costs.3  But  in  order 
to  operate  as  a  supersedeas,  and  thus  stay  execution,  an 
appeal  must  be  taken  within  sixty  days  after  the  rendition 
of  the  decree  ;  and  indeed  an  execution  may  be  issued,  if 
an  appeal  is  not  taken  within  ten  days  after  such  rendition.4 
But  in  the  latter  case,  a  supersedeas  afterward  obtained  will 
prevent  further  proceedings  under  the  execution,  though  it 
will  not  interfere  with  what  has  already  been  done.5  The 
time  within  which  appeals  may  be  taken,  may  properly  be 
held  to  begin,  either  when  the  case  is  finally  decided,  or  when 
the  formal  decree  is  signed  by  the  judge,  and  filed  with  the 
clerk  of  the  court.6  When  an  appeal  operates  as  a  super- 
sedeas, is  so  operates  only  as  against  the  money  recovery 
provided  for  in  the  decree,  and  not  as  against  that  part  of 
the  decree  which  directs  the  payment  of  the  master's  fees,7 
nor  as  against  that  part  which  directs  an  injunction  to  issue  ; 8 
but  the  judge  who  enters  a  decree  granting  an  injunction, 
has  discretionary  power  to  suspend  or  modify  the  same 
pending  an  appeal.9 

And  a  final  decision  of  a  United  States  Circuit  Court,  of 
a  collateral  question  arising  in  a  patent  case,  may  also  be 
appealable  to  the  Circuit  Court  of  Appeals,  even  while  the 
other  questions  in  the  case  are  still  pending  and  undecided 

1  Sections  647  and    648  of  this  man,  19  Wallace,  663,  1873. 

book.  6  Silsbyfl.  Foote,  20  Howard,  290, 

a  26  Statutes  at  Large,  Sections  1857. 

6  and  11.  7  Myers  v.  Dunbar,  1  Bann.  &  Ard. 

3  DuBois  v.   Kirk,  158  U.  8.  67,  565,  1874. 

1895.  8  Whitney  v.   Mowry,   3  Fisher, 

4  Revised  Statutes,  Sections  1012,      175,  1867. 

and  1007.  »  Equity  Rule  93. 

5  Board  of  Commissioners  v.  Gor- 


496  ACTIONS   IN    EQUITY.  [CHAP.  XX. 

in  the  Circuit  Court ;  and  the  decision  of  the  Circuit  Court 
not  to  dismiss  a  bill  for  infringement  of  a  patent,  upon  the 
motion  of  a  nominal  complainant,  against  the  opposition  of 
those  equitably  entitled  to  sue  in  the  name  of  the  nominal 
complainant,  is  an  example  of  such  a  final  decision.1 

No  appeal  lies  from  any  Circuit  Court  of  Appeals  to  the 
Supreme  Court  in  any  patent  case,  except  actions  brought 
by  the  United  States  to  repeal  patents  ; 2  though  any  Circuit 
Court  of  Appeals  may  certify  to  the  Supreme  Court  any 
question  of  law  upon  which  it  desires  the  instruction  of  that 
court  for  its  proper  decision ;  and  the  Supreme  Court  may 
send  a  certiorari  to  any  Circuit  Court  of  Appeals,  requiring 
any  action  in  equity  for  infringement  of  a  patent  to  be  sent  to 
the  Supreme  Court  for  its  review  and  determination,  with 
the  same  power  and  authority  as  if  the  case  had  been  car- 
ried by  an  appeal  to  the  Supreme  %Court.3  Where  a  Circuit 
Court  of  Appeals  sends  such  a' certificate  to  the  Supreme 
Court,  that  certificate  must  clearly  and  distinctly  state  what- 
ever question  of  law  is  involved  therein,  and  must  show  that 
the  Circuit  Court  of  Appeals  desires  to  receive  instruction 
from  the  Supreme  Court  how  to  decide  that  question  ;  and 
where  two  Circuit  Courts  of  Appeals  have  rendered  incon- 
sistent judgments  upon  an  important  question  of  law,  the 
proper  practice  is  to  apply  to  the  Supreme  Court  for  a  cer- 
tiorari directing  one  of  the  cases  to  be  sent  to  that  tribunal 
for  review,  so  as  to  obtain  a  final  decision  of  that  question.4 

And  an  appeal  to  the  Court  of  Appeals  of  the  District 
of  Columbia,  is  demand  able  from  the  final  decree  of  the 
Supreme  Court  of  the  District  of  Columbia,  in  any  case 
arising  under  the  patent  laws.5  And  an  appeal  is  also 
demandable  from  the  final  judgment  of  that  Court  of 
Appeals,  to  the  Supreme  Court  of  the  United  States  without 

1  Brush  Electric  Co.   v.  Electric          3  26  Statutes  at  Large,  Chap.  517, 
Co.   of  San    Jose,    51    Fed.    Rep.      Sec.  6. 

557,  1892.  4  Columbus  Watch   Co.  «.    Rob- 

2  United  States  v.  Bell  Telephone      bins,  148  U.  S.  267,  1893. 

Co.  159  U.  S.  548,  1895.  5  27  Statutes  at  Large,  Chap.  74, 

Sec.  7,  p.  435. 


CHAP.  XX.]  ACTIONS   IN   EQUITY.  497 

regard  to  the  sum  or  value  in  dispute,  in  any  case  wherein 
is  involved  the  validity  of  any  patent.1 

§  655.  On  the  hearing  of  an  appeal  in  the  Circuit  Court 
of  Appeals,  the  decree  may  generally  be  attacked  by  the 
appellant,  upon  any  ground  upon  which  it  was  resisted  in 
the  court  below  ;  and  may  be  supported  by  the  appellee 
upon  any  ground  in  the  record,  whether  the  Circuit  Court 
based  its  decree  upon  that  ground  or  some  other.2  But  the 
decree  cannot  be  assailed  on  the  ground  that  the  court 
below  refused  to  set  aside  a  decree  pro  confesso,3  or  refused 
to  allow  the  appellant  to  retract  an  admission  which  he  had 
made  in  his  pleadings  ; 4  or  granted  or  refused  a  rehearing ;  5 
or  rendered  any  other  decision  which  belonged  to  the  judi- 
cial discretion  of  the  court  to  make.  Nor  can  a  decree  be 
attacked  in  the  Circuit  Court  of  Appeals,  on  account  of  any 
error  made  by  a  master  in  chancery  in  taking  an  account  of 
profits  or  damages,  unless  that  error  was  brought  before 
the  court  below  for  correction,  by  means  of  a  proper  excep- 
tion to  the  master's  report ; 6  and  not  even  then,  where  the 
alleged  error  is  one  of  quantity  or  computation,  and  is  not 
obvious.7  Where  a  decree  is  reversed  and  remanded  for 
further  proceedings,  and  a  second  decree  is  entered  by 
the  court  below  after  those  proceedings  are  taken,  and 
an  appeal  is  taken  from  the  second  decree,  that  decree 
cannot  be  assailed  on  account  of  any  errors  that  occurred 
prior  to  the  former  decree.8  No  decree  can  be  attacked  by 
the  appellee,  on  the  appellant's  appeal.  Where  either 
party  to  a  decree  intends  to  ask  the  Circuit  Court  of 

J27  Statutes  at  Large,  Chap.  74,  e  Kinsman  v.  Parkhurst,  18  How- 
Sec.  8,  p.  436.  ard  289,  1855. 

2  Electric    Gas    Lighting  Co.   v.  1  Warren  v.  Keep,  155  U.  S.  267, 
Fuller,  59  Fed.  Rep.  1003,  1894.  1894. 

3  Dean  v.  Mason,  20  Howard,  198,  »  Himely  v.  Rose,  5  Cranch,  813, 
1857.  1809;  The  Santa  Maria,  10 Wheaton, 

4  Jones  v.  Morehead,  1  Wallace,  431,  1825;  American  Insurance  Co. 
155,  1863.  «.  Canter,  1  Peters.  511,  1828;  Corn- 

&  Roemer  v.  Bernheim,  132  U.  S.       ing  v.  Troy  Iron  &  Nail  Factory,  15 
106,  1889;  Boesch  v.  Graff,  133  U.      Howard,  451,  1853. 
S.  699,  1890. 


498  ACTIONS   IN   EQUITY.  [CHAP.  XX. 

Appeals  to  direct  it  to  be  altered,  he  must  appeal  to  that 
tribunal,  whether  the  other  party  appeals  or  not.1  Where 
both  parties  appeal,  both  appeals  are  heard  together  in  the 
Circuit  Court  of  Appeals,  and  the  complainant  in  the  court 
below  is  entitled  to  open  and  to  close  the  argument.  A 
decree  may  also  be  attacked  by  an  appellant  on  several 
grounds  upon  which  it  may  not  have  been  resisted  in  the 
court  below.  Non-jurisdiction  of  equity  falls  in  this  cate- 
gory,2 where  the  patent  expired  before  the  bill  was  filed; 
and  so  does  want  of  invention,  when  that  want  results  from 
facts  of  which  the  court  will  take  judicial  notice.3  Where 
a  defendant  interposed  several  defences  in  the  court  below, 
and  where  that  court  held  them  all  to  be  bad,  except  one 
which  it  held  to  be  good,  and  therefore  dismissed  the  bill ; 
and  where  the  Circuit  Court  of  Appeals  on  an  appeal  finds 
the  latter  defence  to  be  bad,  it  will  thereupon  decide  whether 
either  of  the  others  are  good,  and  if  it  finds  either  of  them 
to  be  so,  it  will  affirm  the  decree.4  Or  the  Circuit  Court  of 
Appeals  may  find  a  defence  to  be  good,  which  the  court 
below  did  not  so  find,  and  may  thereupon  omit  to  decide 
upon  the  defence  which  the  court  below  found  to  be  good.5 
And  a  decree  for  a  complainant  may  be  sustained  on  a  dif- 
ferent ground  from  that  upon  which  it  was  based  in  the 
court  below.6 

§  656.  After  the  Circuit  Court  of  Appeals  has  heard  an 
appeal,  it  may  affirm  the  decree,  or  may  reverse  it,  or  may 
modify  it,  or  may  remand  the  case  to  the  court  below  for 
further  proceedings.7  Where  it  affirms  the  decree,  it  ends 
the  litigation,  leaving  the  court  below  to  enforce  its  adjudi- 
cation, if  any  enforcement  is  required.  Where  it  reverses 


1  Corning  v.  Troy  Iron    &    Nail  Corning,  15  Howard,  451,  1853. 
Factory,  15  Howard,  451,  1853.  6  Patent  Clothing  Co.  v.  Glover, 

2  Hipp  «.  Babin,  19  Howard,  271,  141  U.  8.  560,  1891. 

1856.  *  Woodward  v.  Boston    Lasting 

3  Brown  v.  Piper,  91   U.   S.   41,  Mach.  Co.  63  Fed.  Rep.  609,  1894. 
1875.  7  Revised  Statutes,    Section  701. 

4  Troy  Iron  &  Nail  Factory  v. 


CHAP.  XX  ]  ACTIONS    IN   EQUITY.  499 

the  decree,  it  generally  does  so  at  the  appellee's  costs,  so 
that  the  court  below,  when  it  receives  the  mandate,  will  have 
nothing  to  do  but  to  tax  those  costs,  and  enter  a  decree 
therefor;  and  from  such  a  decree  there  is  no  appeal.1 
When  it  modifies  the  decree,  it  may  do  so  in  either  of  sev- 
eral respects.  For  example,  it  may  change  a  decree  which 
was  entered  for  the  appellant  with  costs,  to  one  without 
costs,  and  in  that  event  it  will  require  the  appellee  to  pay 
his  own  costs  in  the  Circuit  Court  of  Appeals.8  It  may  also 
change  the  amount  of  the  decree,  instead  of  remanding  the 
case  to  the  court  below  for  a  recomputation.3  Where  it 
remands  a  case  for  further  proceedings,  the  proceedings 
prescribed  may  even  extend  to  a  trial  at  law,  or  by  a  jury 
in  equity,  of  the  questions  of  fact  involved  in  the  case.4 
Where  both  parties  appeal  from  the  decree,  and  the  decree 
is  affirmed,  no  costs  incurred  in  the  Circuit  Court  of  Appeals 
are  allowed  to  either  party.5 

§  657.  A  certificate  of  division  of  opinion  is  a  means  of 
taking  questions  of  law  to  the  Circuit  Court  of  Appeals, 
where  those  questions  arise  in  a  case  heard  by  two  judges 
in  the  court  below,  and  where  those  judges  disagree  about 
their  proper  solution.6  No  question  of  infringement  or 
other  question  of  fact  can  be  taken  to  the  Circuit  Court  of 
Appeals  in  this  method;7  and  such  a  certificate  must  state 
the  precise  points  of  law  which  are  involved,  or  the  case 
will  be  remanded  without  an  answer.8 


1  Elastic  Fabrics  Co.  v.  Smith,  Electric  Supply  Co.  60  Fed.  Rep. 

100  U.  S.  Ill,  1879.  312,  1895. 

8  O'Reilly  v.  Morse,  15  Howard,  •  Revised  Statutes,  Section  698; 

121,  1853.  26  Statutes  at  Large,  Chap.  517, 

3  Parks  v.  Booth,  102  U.  S.  106,  Sec.  11. 

1880.  7  California  Paving  Co.  v.  Molitor, 

4  Cochrane  «.  Deener,  94  U.  S.  113  U.  S.  616,  1884. 

784,  1876.  8  Wilson  v.  Barnura,  8  Howard, 

5  Edison   Electric    Light  Co.  v.  258,  1850. 


CHAPTER   XXI. 


INJUNCTIONS. 


658.  Jurisdiction  to  grant  injunc- 
tions. 

659.  Preliminary  injunctions. 

660.  Bills  for  preliminary  injunc- 
tions. 

661.  Notices  of  motions  for  prelimi- 
nary injunctions. 

662.  Motions    for    preliminary  in- 
junctions. 

663.  Suspensions    of    motions    for 
preliminary  injunctions. 

664.  Temporary  restraining  orders. 

665.  Elements  of  prima  facie  rights 
to  preliminary  injunctions. 
Prior  adjudication. 

Public  acquiescence. 
Duration  of    public    acquies- 
cence in  a  strict  monopoly, 

669.  Duration    of    public  acquies- 
cence in  a  licensed  monopoly. 

670.  Public  acquiescence  need  not 
be  universal  to  be  efficacious. 

671.  Decrees  pro  confesso. 

672.  Consent  decrees. 

673.  Defendant's  admission  of  va- 
lidity. 

674.  Interference  decision. 

675.  The  complainant's  title. 

676.  Infringements. 

677.  Defences  to  motions  for  pre- 
liminary injunctions ;  and  first 
by  way  of  traverse. 

678.  Defences  by  way  of  confession 
and  avoidance. 

679.  Averting  effect  of  prior  adjudi- 
cation. 


680.  Averting  effect  of  public  acqui- 
escence. 

681.  Averting    preliminary  injunc- 
tion by  proving  repeal  or  expi- 
ration of  patent,  or  fault  in 
title  thereto. 

682.  Averting  preliminary  injunc- 
tion by  proving  license. 

683.  By  proving  estoppel. 

684.  By  showing  laches. 

685.  Preliminary    injunction   must 
generally  follow  a  cause  and 
an  application  therefor. 

686.  Bonds  instead  of  injunctions, 
where  complainant  grants  li- 
censes. 

687.  Where  infringing    machinery 
embodies  non-infringing  feat- 
ures, also  in  some  other  cases. 

688.  Bonds  required  from  complain- 
ants in  certain  cases. 

689.  Injunctions  not  averted  by  the 
existence  of  a  remedy  at  law. 

690.  Injunctions    pro    confesso    on 
withdrawal  of  opposition  to  a 
motion  for  an  injunction. 

691.  Discretion    of    the    court    in 
granting  or   refusing    injunc- 
tions. 

692.  Motions  to    dissolve  prelimi- 
nary injunctions. 

693.  Motions  to  dissolve  for  errors 
in  point  of  law. 

694.  Motions  to  dissolve  on  account 
of  newly  discovered  evidence. 

500 


CHAP.  XXI.] 


INJUNCTIONS. 


501 


695.  Reinstatement     of    dissolved 
injunctions. 

696.  Consequences  of  obedience  or 
disobedience     to     injunctions 
which  are   subsequently  dis- 
solved. 

696«.  Appeals     from    preliminary 
injunctions. 

697.  Permanent  injunctions. 

698.  Refusal  of  permanent  injunc- 
tion, because  the  patent  has 
expired. 

699.  Because  the  complainant  has 
assigned  the  patent. 

700.  Because  the  defendant  is  dead, 
or,   if    a  corporation,  is    dis- 
solved. 

701.  Cessation  of  infringement  no 
ground  for  refusal  to  enjoin. 

702.  Postponement    of    permanent 
injunctions. 


703.  Suspension  of  permanent  in- 
junctions    pending      appeals 
therefrom. 

704.  Dissolution  of  permanent  in- 
junctions. 

705.  Injunctions  granted  independ- 
ent of  other  relief,  and  against 
complainants  in  certain  cases 

706.  The    duration  of    injunctions 
generally  limited  by  the  term 
of  the  patent. 

707.  The    duration  of    injunctions 
granted  by  district  judges  in 
vacation. 

708.  Attachments  for,  contempt. 

709.  Improper  defences  to  motions 
for  attachments. 

710.  Penalties  for  violations  of  in- 
junctions. 


§  658.  JUEISDICTION  to  grant  injunctions  to  prevent  the 
violation  of  patent  rights,  is  conferred  by  statute  upon  the 
same  courts  that  are  vested  with  common-law  jurisdiction 
in  patent  cases.1  The  statute  provides  that  the  jurisdiction 
shall  be  exercised  according  to  the  course  and  principles  of 
courts  of  equity,  and  upon  such  terms  as  the  court  may 
deem  reasonable.  This  twofold  provision  indicates  the 
sources  from  which  the  existing  rules  applicable  to  such 
cases  were  drawn.  They  were  drawn  from  the  ordinary 
course  and  principles  of  courts  of  equity,  and  from  a  rea- 
sonable contemplation  of  the  peculiar  circumstances  which 
attend  patent  rights  and  patent  litigation.  Some  of  those 
rules  relate  only  to  preliminary  injunctions,  and  others 
relate  to  permanent  injunctions  alone  ;  and  the  residue  are 
equally  applicable  to  both.  It  is  the  plan  of  this  chapter 
to  explain  those  three  classes  of  rules,  and  to  show  how  all 
of  them  combined  make  up  a  system  which  may  guide  the 
judicial  discretion  in  nearly  every  variety  of  circumstances. 


1  Revised  Statutes,  Section  4921. 


502  INJUNCTIONS.  [CHAP.  xxi. 

§  659.  A  preliminary  injunction  is  one  which  is  granted 
after  the  filing  of  the  bill,  and  before  the  case  is  ready  for 
an  interlocutory  hearing.  When  granted,  it  is  commonly 
granted  before  the  filing  of  the  answer ;  but  it  is  sometimes 
issued  after  that  stage  of  the  case,  and  sometimes  even  after 
the  complainant  has  introduced  all  his  prima  facie  evi- 
dence.1 Such  an  injunction  may  be  dissolved  at  any  time  ; 
and  a  motion  to  dissolve  it  may  be  made  whenever  an 
apparent  cause  for  its  dissolution  becomes  known  to  the 
party  enjoined.  If  not  sooner  terminated  by  dissolution, 
or  by  a  certain  statutory  limitation  hereafter  explained, 
such  an  injunction  continues  till  the  interlocutory  decree ; 
and  then  it  is  dissolved  or  is  made  permanent,  according  to 
the  equities  of  the  case  as  they  appear  on  the  interlocutory 
hearing. 

§  660.  A  bill  of  complaint,  in  order  to  lay  a  foundation 
for  a  preliminary  injunction,  must  state  the  particular  prior 
adjudication  or  acquiescence  upon  which  the  presumption 
of  validity  of  the  patent  is  based,a  and  must  contain  a  specific 
prayer  for  that  relief,  and  for  the  proper  writ  by  means 
of  which  that  relief  may  be  enforced,3  and  must  conform  to 
those  requisites  of  bills  in  equity  which  are  set  forth  in<the 
twentieth  chapter  of  this  book. 

§  661.  Due  notice  of  a  motion  for  a  preliminary  injunction 
must  be  served  on  the  party  sought  to  be  enjoined  from 
infringing  a  patent,  before  that  motion  will  be  heard  by  the 
court.  This  rule  formerly  had  a  sufficient  foundation  in  a 
statute  of  1793,  which  provided  that  no  writ  of  injunction 
should  be  granted  in  any  case  without  reasonable  previous 
notice  to  the  adverse  party,  or  his  attorney,  of  the  time  and 
place  of  moving  for  the  same.4  Portions  of  the  section 


1  Union  Paper  Bag  Machine  Co.  Franklin  Co.  54  Maine.  402,  1867; 
».  Newell,  11  Blatch.  550,  1874.  Union  Bank  v.  Kerr,  2  Maryland 

2  Parker  v.  Brant,  1  Fisher,  59,  Chancery,  460,  1849. 

1850;  Wirt  v.  Hicks,  46  Fed.  Rep.  4  1  Statutes  at  Large,  Ch.  22,  Sec- 

71,1891.  tion5,  p.  334. 

3  Lewiston    Falls    Mfg.    Co.    v. 


CHAP.  XXI.]  INJUNCTIONS.  503 

which  contained  that  provision  are  embraced  in  the  Revised 
Statutes,1  but  that  provision  was  omitted  from  those  statutes, 
and  was  thereby  repealed.2  But  there  is  still  a  foundation 
for  the  rule,  which  is  stated  at  the  head  of  this  section ;  a 
foundation  not  so  direct,  but  quite  as  certain,  as  the  other 
was  while  it  existed.  The  Revised  Statutes  provide  that 
the  Supreme  Court  shall  have  power  to  prescribe  from  time 
to  time,  and  in  any  manner  not  inconsistent  with  any  law 
of  the  United  States,  the  modes  of  proceeding  to  obtain 
relief  in  suits  in  equity  in  the  circuit  and  district  courts.3 
In  pursuance  of  this  authority,  the  Supreme  Court  has  pre- 
scribed an  elaborate  code  of  rules  of  practice  for  the  courts 
of  equity  of  the  United  States.  Rule  55  of  that  series  pro- 
vides that  special  injunctions  shall  be  grantable  only  upon 
due  notice  to  the  other  party.  And  it  is  certain  that  all 
injunctions  to  restrain  infringements  of  patents  are  special 
as  distinguished  from  common  injunctions.4  A  different 
line  of  argument  on  this  subject,  and  one  followed  by  a  con- 
trary conclusion,  is  to  be  found  in  one  reported  case,5  but 
the  reasoning  in  that  case  does  not  appear  to  be  convincing. 
§  662.  A  motion  for  a  preliminary  injunction  is  heard  in 
a  summary  way  on  ex-parte  affidavits.6  The  complainant's 
affidavits  in  chief  must  show  all  the  facts  which  are  neces- 
sary to  prima  facie  entitle  him  to  such  an  injunction.7  The 
defendant's  affidavits  must  state  all  the  facts  upon  which  he 
bases  his  defence  to  the  motion,  and  if  those  statements  are 
by  way  of  traverse,  no  further  affidavits  are  admitted  on  the 
hearing ;  but  if  they  are  by  way  of  confession  and  avoidance, 
the  complainant  is  permitted  to  read  affidavits  in  reply, 


1  Revised  Statutes,  Sections  716  Reports  (N.  C.).  11,  1851. 

and  720.  6  Yuengling  v.  Johnson,  1  Hughes, 

2  Revised  Statutes,  Section  5596.  607,  1877. 

3  Revised  Statutes,  Section  917;  6  Grover  &  Baker    Sewing   Ma- 
Orr  v.  Littlefleld,  1   Woodbury  &  chine  Co.  v.  Williams,  2  Fisher,  183, 
Minot,  19,  1845.  1860. 

4  High  on  Injunctions,  Section  6;  7  Union  Paper  Bag  Machine  Co. 
Purnell  v.  Daniel,  8  Iredell's  Equity  «.  Binney,  5  Fisher,  167,  1871. 


504  INJUNCTIONS.  [CHAP.  xxi. 

but  to  that  reply  no  rejoinder  from  the  defendant  is  ever 
allowed. J3 

The  complainant's  bill  may  be  used  as  an  affidavit,2  and 
so  also  may  the  defendant's  answer,  if  it  is  on  file  when  the 
motion  for  a  preliminary  injunction  is  heard.3  But  answers 
are  commonly  and  properly  drawn  in  such  general  terms 
that  they  are  often  of  minor  importance  as  defences  to  such 
motions,  even  where  they  are  well  concerted  as  pleadings. 
For  example,  where  the  t answer  says,  on  the  question  of 
infringement,  that  the  defendant  never  made,  used  or  sold 
any  specimen  of  the  patented^thing ;  and  where  the  affi- 
davits of  the  complainant  contain  a  description  of  what  the 
defendant  has  done,  and  contain  proper  expert  testimony 
showing  that  those  doings  constitute  infringement  of  the 
patent,  the  general  denial  of  the  answer  will  go  for  nought 
on  the  hearing  of  a  preliminary  injunction.4  The  statements 
of  the  complainant's  affidavits  in  chief  are  taken  on  'the 
hearing  to  be  true,  so  far  as  they  are  uncontradicted  by  the 
affidavits  of  the  defendant ; 5  and  the  affidavits  of  the  defend- 
ant are  taken  to  be  true,  so  far  as  they  are  consistent  with 
the  complainant's  affidavits  in  chief,  and  are  not  contra- 
dicted by  his  affidavits  in  reply.6 

All  affidavits  to  be  used  to  support  or  to  oppose  a  motion 
for  a  preliminary  injunction  ought  to  be  served  on  the  oppo- 
site counsel  a  reasonable  time  before  the  motion  is  argued. 
Where  that  is  not  done,  the  court  may  reject  the  affidavits, 
or,  at  its  discretion,  may  allow  them  to  be  read,  giving  the 
opposite  party  the  option  to  proceed  with  the  hearing,  or 
to  take  time  to  examine  the  affidavits,  and  where  they  admit 
of  reply,  to  take  other  affidavits  for  that  purpose.7 


1  Day  v.  Car-Spring  Co.  3  Blatch  4  Ely  ®.  Mfg.  Co.  4  Fisher,  64, 
154,    1854;    Rogers   «.    Abbot,     4  1860. 

Washington,  514,  1825.  5  Wells  v.  Gill,  6  Fisher,  89,  1872. 

2  Young  «.  Lippman,   9  Blatch.  6  Cooper   v.  Mattheys,   3    Penn. 
277,  1872.  Law  Journal  Reports,  40,  1842. 

3  Parker  ®.  Brant,  1  Fisher,  58,  7  Sterrick  v.  Pugsley,  1  Central 
1850.  Law  Journal,  106,  1874. 


CHAP.  XXI.]  INJUNCTIONS.  505 

§  663.  Where,  on  the  hearing  of  a  motion  for  a  prelimi- 
nary injunction,  the  complainant's  moving  papers  are  found 
to  lack  a  necessary  point  which  is  presumably  capable  of 
being  supplied,  the  court  may  suspend  the  motion  to  enable 
the  complainant  to  supply  it.1  Such  a  lack  and  consequent 
suspension  are  not  injurious  to  a  defendant,  because  they 
merely  operate  to  postpone  that  which  he  desires  to  be 
postponed  as  long  as  possible.  No  similar  rule  can,  how1- 
ever,  be  invoked  in  favor  of  a  defendant  who  has  had  rea- 
sonable notice  of  the  motion,  for  if  he  could  invoke  such  a 
rule,  he  could  delay  justice  by  his  own  neglect. 

If  a  demurrer  is  on  file  in  the  case  when  a  motion  for  a 
preliminary  injunction  comes  on  to  be  heard,  the  demurrer 
will  be  first  heard  and  disposed  of,  even  though  that  pro- 
ceeding necessitates  a  postponement  of  the  hearing  of  the 
motion.  But  if  the  demurrer  is  overruled,  the  defendant, 
in  order  to  secure  leave  to  contest  the  motion  further,  must 
file  an  affidavit  that  the  demurrer  was  not  filed  for  the  pur- 
pose of  delay,  and  must  give  security  to  pay  the  complainant 
the  amount  of  any  money  decree  to  which  the  delay  conse- 
quent upon  the  demurrer  may  afterward  be  'found  to  entitle 
him.2 

§  664.  A  temporary  restraining  order  may  be  made  by 
the  court,  where  there  appears  to  be  danger  of  irreparable 
injury  from  delay,  whenever  notice  is  given  of  a  motion  for 
a  preliminary  injunction  ;  and  such  an  order  may  be 
granted  with  or  without  security,  in  the  discretion  of  the 
court,  or  judge,  and  will  continue  in  force  till  the  motion  is 
decided.3  The  object  of  this  provision  appears  to  be  to 
give  the  judge  time  to  consider  whether  to  grant  a  prelimi- 
nary injunction,  instead  of  deciding  the  question  immedi- 
ately upon  the  close  of  the  argument  of  a  motion  for  such 
a  writ.  It  does  not  appear  to  warrant  a  restraining  order 


1  Hodge  «.  Railroad  Co.  6  Blatch.      Woodbury  &  Minot,  181,  1847. 
85,  1868.  8  Revised  Statutes,  Section  718. 

2  Woodworth     v.    Edwards,     3 


506  INJUNCTIONS.  [CHAP.  xxi. 

before  notice  is  actually  served  upon  the  defendant,  nor 
indeed  before  the  motion  has  been  heard  by  the  court, 
though  the  last  member  of  this  statement  is  less  clearly 
true  than  the  first.  Even  the  first  has  been  denied  by  one 
district  judge  ;  but  in  order  to  deny  it,  he  had  to  hold  that 
a  notice  is  "  given  "  when  a  rule  to  show  cause  against  a 
motion  is  entered  in  court.1  But  the  statute  does  not  pro- 
vide for  any  rule  to  show  cause.  It  provides  for  a  notice 
which  is  given  ;  and  no  notice  can  be  said  to  be  given  until 
it  is  served. 

§  665.  In  deciding  whether  a  complainant  at  bar  has  made 
out  a prima  facie  case  for  a  preliminary  injunction  to  restrain 
infringement  of  a  patent,  the  judge  is  guided  by  the  pres- 
ence or  absence  of  two  presumptions  and  one  certainty. 
Those  presumptions  relate  to  the  validity  of  the  patent  and 
to  the  defendant's  infringement  thereof,  and  that  certainty 
relates  to  the  complainant's  title  thereto.  If  that  certainty 
or  either  of  those  presumptions  are  absent  in  a  given  case, 
no  preliminary  injunction  will  be  granted ;  but  such  a  writ 
will  be  granted  where  they  are  all  present,  unless  the  defend- 
ant interposes  some  good  defence  to  the  motion,  or  unless 
the  court  takes  a  bond  from  the  defendant  instead  of  sub- 
jecting him  to  an  injunction.  A  special  presumption  that 
the  patent  is  valid,  lies  at  the  foundation  of  a  patentee's 
right  to  a  preliminary  injunction.2  That  presumption  does 
not  arise  out  of  the  unattended  letters  patent,3  but  will 
always  exist  where  the  patent  has  been  suitably  adjudicated 
in  a  Federal  court,  and  there  held  to  be  valid  ; 4  or  where 
the  validity  of  the  patent  has  been  suitably  acquiesced  in 


1  Yuengling       «.       Johnson,      1  ard  Elevator  Co.  «.  Crane  Elevator 
Hughes,  607,  1877.  Co.  56  Fed  Rep.  719,  1893. 

2  Edward  Barr  Co.  v.  Sprinkler          4  Orr  v.  Littlefleld,  1  Woodbury 
Co.  32  Fed.  Rep.  80,  1887.  &  Minot,  13,  1845;  Edison  Electric 

3  Foster  v.  Crossin,  23  Fed.  Rep.  Light  Co.  v.  Beacon  Electrical  Co. 
401,   1885;     Dickerson  v.  Machine  54  Fed.  Rep.  679,  1893. 

Co.  35  Fed.  Rep.  145,  1888;  Stand- 


CHAP.  XXI.]  INJUNCTIONS.  507 

by  the  public  ; l  or  where  the  defendant  at  bar  has  allowed 
a  decree  pro  confesso  to  be  taken  against  him  ; 2  or  where 
the  defendant  does  not  deny  the  validity  of  the  patent ; 3  or 
where  he  is  estopped  from  doing  so  ; 4  and  that  presumption 
will  sometimes  exist  where  the  patent  has  successfully 
undergone  an  interference  or  other  contested  proceeding  in 
the  Patent  Office.5 

§  666.  An  adjudication  in  another  case,  in  order  to  fur- 
nish a  suitable  foundation  for  a  right  to  a  preliminary 
injunction,  must  have  resulted  in  favor  of  the  patent  in  a 
regular  hearing  in  equity,  or  on  the  trial  of  an  action  at 
law.6  Of  these,  the  former  raises  the  stronger  presumption,7 
but  most  of  the  considerations  which  apply  to  it,  apply  also 
to  the  latter.  An  interlocutory  decree  in  another  case  is  as 
good  a  foundation  for  a  right  to  an  injunction  as  a  final 
decree  would  be ; 8  because  an  interlocutory  decree  settles 
all  pending  questions  of  validity,  and  a  final  decree  merely 
reiterates  its  conclusions  on  that  point.  An  adjudication  of 
a  prior  suit  based  on  the  first  term  of  a  patent,  may  be  made 
the  foundation  of  a  right  to  a  preliminary  injunction  to 
restrain  infringement  of  the  extended  term  of  the  same 
patent.9  But  no  adjudication  of  a  suit  based  on  an  original 


1  Goodyear    «.    Railroad    Co.    1  5  Pentlarge  v.  Beeston,  14  Blatch. 
Fisher,   626,  1853;  American  Mid-  354,  1877;  Smith  v.   Halkyard,   16 
dlings  Purifier  Co.  «.  Christian,  3  Fed.  Rep.  414,  1883;  Consolidated 
Bann.   &  Ard.   48,  1877 ;  White  v.  Apparatus  Co.  v.  Brewing  Co.  28 
Surdam,  41   Fed.   Rep.   791,    1890;  Fed.   Rep.   428.  1886;  Minneapolis 
White  v.  Hunter,  47  Fed.  Rep.  819,  Harvester  Works  «.   Machine  Co. 
1891;    Sessions  «.  Gould,  49  Fed.  28  Fed.  Rep.  565,  1886;  Dickerson 
Rep.  856,  1892;  Palmer  «.  Mill,  57  v.   Machine  Co.  35  Fed    Rep.  147, 
Fed.  Rep.  222,  1893;  Corser  «.  Over-  1888. 

all  Co.  59  Fed.  Rep.  781,  1893.  6  Doughty  v.  West,  2  Fisher,  559, 

2  Schneider  v.   Bassett,   13  Fed.  1865. 

Rep.  351,  1882.  7  Goodyear  v.  Mullee,  8  Fisher, 

3Sickels  v.  Mitchell.  3  Blatch.  420,  1868. 

548,  1857;  New  York  Grape  Sugar  8  Potter  t>.  Fuller,  2  Fisher,  25 1 

Co.  v.  American  Grape  Sugar  Co.  10  1862. 

Fed.  Rep.  835,  1882.  9  Cl^m  v.  Brewer,  2  Curtis,  507, 

4  Time  Telegraph  Co  v.  Himmer,  1855;  Tilghman  t>.  Mitchell,  4  Fish- 

19  Fed.  Rep.  323,  1884.  or,  615\1871. 


508  INJUNCTIONS.  [CHAP.  XXI. 

patent,  can  be  invoked  as  a  basis  for  a  preliminary  injunc- 
tion to  restrain  infringement  of  any  new  claim  contained  in 
a  reissue  thereof.1  Though  an  injunction  in  favor  of  one 
claim  of  a  patent  is  a  basis  for  a  preliminary  injunction  on 
another  claim,  specifying  the  same  invention  in  narrower 
terms.2  Where  the  prior  adjudication  was  that  of  the 
Supreme  Court  or  of  a  Circuit  Court  of  Appeals,  it  is  con- 
clusive of  the  questions  it  covered ; 3  and  where  the  prior 
adjudication  was  that  of  a  Circuit  Court,  it  will  be  followed 
unless  it  is  inconsistent  with  some  other  decision  of  equal 
or  higher  rank  ;4  and  a  verdict  of  a  jury,  which  is  supple- 
mented by  a  refusal  to  grant  a  new  trial,  and  by  the  entry 
of  a  judgment  thereon,  has  the  same  weight  as  an  adjudica- 
tion in  equity.5  But  a  prior  adjudication  of  a  court  of  some 
foreign  nation  or  dominion,  is  in  no  manner  controlling, 
though  entitled  to  consideration  as  embodying  the  opinion 
of  a  judicial  tribunal.6  And  where  the  prior  adjudication 
was  based  upon  an  estoppel,7  or  upon  some  other  ground 
than  recognized  validity  of  the  patent,8  it  does  not  con- 
stitute any  ground  for  a  preliminary  injunction  against 
another  defendant. 

§  667.  Public  acquiescence  sufficient  to  create  a  presump- 
tion of  validity,  and  therefore  sufficient  to  furnish  a  founda- 
tion for  a  right  to  a  preliminary  injunction,  may  arise  out 
of  either  of  two  classes  of  facts.  It  may  arise  where  the 
patentees  made  and  sold  specimens  of  the  patented  article 
for  many  years,  during  which  no  other  person  assumed  to 


1  Poppenhusen  v.  Falke,  2  Fisher,  ner  Palace  Car  Co.  44  Fed.  Rep. 

181,  1861.  765,  1891. 

a  Sawyer  Spindle  Co.  v.  Taylor,  5  Woodard  v.  Gas-Stove  Co.  68 

56  Fed  Rep.  110,  1893.  Fed.  Rep.  717,  1895. 

3  American  Bell  Telephone  Co.  ®.  6  Carter  v.  Wollschlaeger,  53  Fed. 
McKeesport  Tel.  Co.  57  Fed.  Rep.  Rep.  575,  1892. 

661,   1893;  Edison    Electric    Light  7  Ney  Mfg.   Co.   v.   Drill  Co.  56 

Co.   v.  Philadelphia  Trust  Co.  60  Fed.  Rep.  153,  1893. 

Fed.  Rep.  397,  1894.  8  Empire  State  Nail  Co.  v.  Button 

4  Pullman  Palace  Car  Co.  v.  Wag-  Co.  61  Fed.  Rep.  650,  1894. 


CHAP.  XXI.]  INJUNCTIONS.  509 

make  any  such  specimens  ;  *  or  it  may  arise  where  the  pat- 
entee long  licensed  others  to  make,  use,  or  sell  such  speci- 
mens, while  nobody  assumed  to  do  either  without  such  a 
license  from  him  ;  and  the  acquiescence  is  quite  as  positive 
in  this  case  as  in  the  other.2  But  acquiescence  in  exclusive 
use  of  a  thing  which  contains  several  patented  inventions, 
does  not  raise  a^pecial  presumption  of  validity  in  favor  of 
any  particular  one  of  the  patents  involved ; 3  and  when 
acquiescence  stops  for  good  reasons,  the  special  presump- 
tion of  validity  which  rested  upon  it  comes  also  to  an  end  ; 4 
and  mere  manufacture  and  sale  of  a  patented  article  does 
not  constitute  acquiescence  in  the  patent  which  claims  it.5 

§  668.  The  length  of  time  necessary  to  make  exclusive 
possession,  of  the  first  sort,  available  on  a  motion  for  a  pre- 
liminary injunction,  depends  upon  the  nature  of  the  inven- 
tion, and  on  the  extent  to  which  a  good  invention  of  the 
sort  would  naturally  be  used  if  it  were  free  to  the  public ; 
and  upon  the  popularity  of  that  particular  invention  with 
that  part  of  the  public  likely  to  want  an  article  of  the  kind.6 
Where  nobody  but  the  patentee  had  any  use  for  the  article 
during  the  time  of  the  alleged  acquiescence,  or  where  its 
merits  were  prized  so  low  that  nobody  else  cared  to  adopt 
it ;  no  lapse  of  time  has  any  tendency  to  raise  a  presump- 
tion that  the  patent  is  valid.7  Acquiescence  in  claims  which 
nobody  cared  to  dispute  when  the  acquiescence  occurred, 
has  no  tendency  to  show  that  those  claims  are  valid.8  But 
where  all  persons,  other  than  the  owner  of  the  patent, 
refrain  from  making,  using,  or  selling  specimens  of  the 


1  Sargent  v.   Seagrave,  2  Curtis,  Fed.  Rep.  521, 1895. 

557,  1855;  Covert  «.  Curtis,  25  Fed.  4  Wollensak  v    Sargent,  33  Fed. 

Rep.    43,    1885;      National    Typo-  Rep.  843,  1888. 

graphic  Co.  v.  New  York  Typograph  8  Geo.  Ertel  Co.  v.  Stahl,  65  Fed. 

Co.  46  Fed.  Rep.  116,  1891;  Blount  Rep.  521,  1895. 

9.  Societe,  53  Fed.  Rep.  102,  1892.  «  Doughty  9.  West,  2  Fisher,  559, 

2  Thomson  Electric  Welding  Co.  1865. 

9.  Two  Rivers  Mfg.  Co.  63  Fed.  Rep.  7  Raymond  v.  Woven  Hose  Co.  39 

121,  1894.  Fed.  Rep.  366,  1889. 

»  Upton  v.  Way  land,  36  Fed.  Rep.  «  Geo.  Ertel  Co.  9.  Stahl,  65  Fed. 

691, 1888;  Geo.  Ertel  Co.  v.  Stahl,  65  Rep.  521 ,  1895. 


510  INJUNCTIONS.  [CHAP.  xxi. 

i  * 

patented  article  merely  because  it  is  patented,  and  notwith- 
standing it  would  otherwise  be  for  their  interest  to  adopt 
it,  their  acquiescence  shows  their  conviction  that  the  patent 
is  valid  ; J  a  conviction  presumably  based  on  inquiry,  because 
persons  are  not  likely  to  acquiesce  in  adverse  rights  with- 
out any  investigation  of  their  soundness.2  In  a  case  of  the 
latter  sort,  any  acquiescence  which  is  shown  by  lapse  of 
time  to  be  general  and  to  be  genuine,  will  be  sufficient  to 
sustain  a  preliminary  injunction.3  Two  years  have  been 
found  to  be  ample  in  a  case  where  the  patentee  made  and 
sold  105,000  specimens  of  his  patented  apple-paring  machine 
during  that  time,4  and  in  another  case,  eight  years,  in  which 
the  patentee  made  and  sold  150  specimens  of  his  patented 
machine  for  cutting  leather  for  shoe  soles,  were  held  to  be 
sufficient.5 

§  669.  The  length  of  time  necessary  to  make  exclusive 
possession,  of  the  second  sort,  available  on  a  motion  for  a 
preliminary  injunction  will  depend  largely  upon  whether 
the  licenses  granted,  were  granted  in  consideration  of  the 
payment  of  substantial  royalties,  or  for  such  an  insignifi- 
cant price  as  indicates  that  they  were  issued  for  the  sole 
purpose  of  raising  a  presumption  of  public  acquiescence. 
In  the  former  case,  it  is  safe  to  assume  that  sales  of  licenses 
will  be  quite  as  rapidly  efficacious  in  the  desired  direction 
as  sales  of  specimens  of  the  patented  invention;6  while  in 
the  latter  case,  a  long  and  genuine  payment  of  royalties 
will  be  necessary  to  give  the  licenses  any  importance  in 
respect  of  preliminary  injunctions  against  third  parties. 

§  670.  Public  acquiescence  is  strengthened  rather  than 
weakened,  as  a  foundation  to  a  right  to  a  preliminary 
injunction,  by  the  fact  that  some  persons  for  a  while  refused 


1  National    Typographic    Co.    ».  4  Sargent  t>.   Seagrave,  2  Curtis, 
New  York  Typograph  Co.  46  Fed.  557,  1855. 

Rep.  116,  1891.  5  Foster  ®.  Moore,  1  Curtis,  279, 

2  Grover  &  Baker  Sewing  Machine  1852. 

Co.  v.  Williams,  2  Fisher,  134,  1860.  6  Grover  &  Baker    Sewing    Ma- 

3  Orr  v.  Littlefield,  1  Woodbury  chine  Co.  v.  Williams,  2  Fisher, 
&  Minot,  17,  1845.  138,  1860. 


CHAP.  XXI.]  INJUNCTIONS.  511 

to  join  in  it,  but  on  receiving  further  information,  sub- 
mitted to  the  exclusive  right  claimed  by  the  patentee.  Such 
a  submission  is  generally  the  most  persuasive  degree  of 
acquiescence,1  and  is  certainly  so  where  the  submission  was 
costly  to  him  who  submitted.2  Nor  is  universal  acquies- 
cence necessary  to  be  shown  as  existing  at  the  time  of  the 
motion ;  for  if  it  were  necessary  and  were  shown,  it  would 
prove  that  the  defendant  himself  is  not  infringing  the 
patent,  and  thus  negative  that  part  of  the  foundation  of  the 
case.3  But  a  preliminary  injunction  will  not  be  granted  on 
any  basis  of  acquiescence,  where  the  defendant  has  been 
long  in  possession  and  use  of  the  invention,  adverse  to  the 
claim  of  the  complainant,  and  under  a  claim  and  color  of 
right.4  No  acquiescence  in  an  original  patent  can  be  made 
the  basis  of  a  right  to  a  preliminary  injunction  to  restrain 
infringement  of  any  claim  in  a  reissue  of  that  patent,  unless 
that  claim  was  also  contained  in  the  original.5  But  where 
some  applicable  acquiescence  is  proved,  it  would  be  strength- 
ened as  a  foundation  for  a  preliminary  injunction  by  the 
fact  that  it  has  been  tried  as  such  a  foundation  in  another 
case  by  basing  a  preliminary  injunction  upon  it.6 

§  671.  A  decree  pro  confesso  entered  in  a  case  raises  a 
sufficient  presumption  of  the  validity  of  the  patent  to  sup- 
port a  right  to  a  preliminary  injunction  in  that  case,7  but 
there  is  no  ground  for  giving  such  a  decree  such  an  opera- 
tion in  any  case  against  another  defendant.8 


1  Sargent  v.  Seagrave,  2  Curtis,  chine  Co.  v.   Williams,   2  Fisher, 
556,  1855;  Carter  v.  Wollschlaeger,  144,  1860. 

53  Fed.  Rep.  576.  1892.  6  Blount  «.  Societe,  53  Fed.  Rep. 

2  Corbin    Lock    Co.    v.    Yale    &  102  1893;   Carter  v.  Woolschlaeger. 
Towne  Mfg.  Co.  58  Fed.  Rep.  565,  53    Fed.    Rep.    575,   1892;    Carter- 
1893.  Crume  Co.  v.  Ashley,  68  Fed.  Rep. 

3  McComb  v.  Ernest,  1  Woods,  379,  1895. 

206,  1871.  7  Schneider  v.  Bassett,   13  Fed. 

4  Isaacs  v.  Cooper,  4  Washington,  Rep.  351,  1882. 

259,  1821.  8  Everett  «.  Thatcher,  3  Bann.  A 

5  Grover  &  Baker   Sewing    Ma-  Ard.  437,  1878. 


512  INJUNCTIONS.  [CHAP.  XXI. 

§  672.  A  consent  decree  is  one  which  is  entered  by  the 
consent  of  the  defendant,  at  some  stage  of  the  case  after  the 
filing  of  the  answer,  and  before  the  judge  has  decided  the 
case  on  its  merits.  In  some  branches  of  jurisprudence  such 
a  decree  may  raise  as  strong  a  presumption  of  the  validity 
of  the  complainant's  case  as  could  be  raised  by  a  decree 
based  on  a  decision  of  the  court.  That  may  be  the  fact 
where  the  nature  of  the  case  shows  that  it  would  have  been 
distinctly  more  advantageous  for  the  defendant  to  win  the 
suit  than  to  be  defeated.  But  in  patent  cases,  it  would 
often  be  pecuniarily  better  for  the  defendant  to  consent  to 
a  decree  against  him  than  to  win  the  suit,  if  by  doing  the 
former,  he  could  enable  the  complainant  to  secure  prelimi- 
nary injunctions  against  third  parties.  If  he  wins,  he 
secures  a  right  to  continue  his  doings,  but  he  also  practi- 
cally secures  the  same  right  for  other  persons,  and  thus 
throws  the  business  open  to  general  competition.  If  by 
consenting  to  a  decree  against  himself,  a  defendant  could 
secure  a  license  on  favorable  terms,  and  could  enable  the 
complainant  to  prevent  all  competition  by  means  of  pre- 
liminary injunctions,  it  would  frequently  happen  that  the 
defendant's  net  profits  would  be  larger  than  they  would 
have  been  if  he  had  won  the  suit.  To  win  the  suit  would 
often  operate  to  reduce  prices  and  profits  to  an  amount  in 
excess  of  the  aggregate  of ,  the  decree  to  which  he  might 
consent,  and  the  royalties  he  might  promise  to  pay.  In 
such  a  case  a  defendant  could  better  afford  to  pay  the 
decree  and  the  royalties  than  to  have  had  complete  success 
in  his  defence.  For  these  reasons,  a  consent  decree  in  a 
patent  case  can  never  be  a  proper  foundation  for  a  right  to 
a  preliminary  injunction  against  third  persons;  unless  it 
appears  from  the  nature  of  the  patented  thing,  or  from  con- 
vincing evidence,  that  the  defendant  consented  to  the  decree 
because  his  defence  had  become  hopeless,  and  not  because 
it  had  become  inexpedient  regardless  of  its  strength.  This 
fact  can  never  appear  from  the  nature  of  the  patented  thing, 
where  that  thing  is  an  article  of  commerce;  because  the 
making  and  selling  of  articles  of  commerce  is  subject  to 


CHAP.   XXI.]  INJUNCTIONS.  513 

those  laws  of  trade  which  are  sure  to  diminish  profits  when- 
ever monopoly  is  replaced  by  competition.  The  considera- 
tions stated  in  this  paragraph  are  doubtless  those  which 
have  caused  Federal  judges  to  disregard  consent  decrees 
when  deciding  upon  applications  for  preliminary  injunc- 
tions in  patent  cases.1  It  is  true  that  the  same  judge  who 
made  the  third  of  the  decisions  just  cited,  once  based  a  pre- 
liminary injunction  partly  on  a  consent  decree  in  another 
case,2  but  he  did  so  on  the  ground  that  the  circumstances 
under  which  the  decree  was  entered  convinced  him  that  it 
was  consented  to  because  the  defendant  was  unable  to  make 
a  successful  defence. 

§  673.  Where  a  defendant  admits  or  does  not  deny  in  his 
pleadings,  the  validity  of  the  patent  upon  which  a  prelimi- 
nary injunction  is  sought  against  him,  there  seems  to  be  no 
reason  why  such  an  admission  or  lack  of  denial  should  not 
raise  a  sufficient  presumption  of  that  validity  to  furnish 
a  foundation  to  a  right  to  a  preliminary  injunction  in  that 
case.3  As  between  the  parties  to  a  motion,  the  court  may 
properly  assume  every  statement  of  fact  to  be  true  which  is 
made  by  the  complainant,  and  expressly  or  tacitly  admitted 
by  the  defendant.  And  where  the  validity  of  a  patent  is 
disputed  on  no  ground,  except  one  which  is  susceptible  of 
an  immediate  and  correct  decision,  such  a  decision  may  be 
made  on  a  motion  for  a  preliminary  injunction,  and  may 
result  in  the  granting  of  the  injunction,  if  the  decision  is 
favorable  to  the  patent.4 

§  674.  An  interference  decision  of  the  Patent  Office  raises 
a  sufficient  presumption  of  validity  to  furnish  a  foundation 
for  a  preliminary  injunction,  where  the  defendant  is  the 


1  Spring  v.  Domestic  Sewing  Ma-  ken,  37  Fed.  Rep.  686.  1889. 

chine  Co.  4  Bann.  &  Ard.  427,  1879;  a  Steam  Gauge  &  Lantern  Co.  ». 

Hayes  ».  Leton,  5  Fed.  Hep.  521,  Miller,  8  Fed.  Rep.  314,  1881. 

1881 ;  De  Ver  Warner  v.  Bassett,  7  s  New  York  Grape  Sugar  Co.  v. 

Fed.  Rep.  468,  1881;  Keyes  v.   Re-  American  Grape  Sugar  Co.  10  Fed. 

fining  Co.   31  Fed.  Rep.  561,  1887;  Rep.  835,  1882. 

Wollensak  v.  Sargent,  33  Fed.  Rep.  *  Foster  «.  Crossin,  •>$  Fed.  Rep. 

843,  1888;  Tibbe  Mfg.  Co.  «.  Heine-  400,  1885. 


514  INJUNCTIONS.  [CHAP.  xxi. 

person,  or  the  legal  representative  or  assignee  of  the  person 
who  was  defeated  in  the  interference,  and  where  he  denies 
the  validity  of  the  patent  on  no  other  ground  than  that  the 
decision  of  the  Patent  Office  on  the  question  of  priority  in 
the  interference  was  wrong.1  But  such  an  interference 
decision  cannot  be  invoked  against  third  parties,  because  it 
does  not  rise  to  the  dignity  and  force  of  an  adjudication 
of  a  court.3  And  it  cannot  be  invoked  as  against  any 
defence  not  involved  in  it,  because  it  has  no  relevancy  to 
any  such  defence.3  And  where  the  defeated  party  in  the 
interference,  contended  in  the  Patent  Office  that  the  patent 
should  not  issue  to  the  other  party,  because  the  invention 
was  in  public  use  or  on  sale  in  this  country,  more  than  two 
years  before  that  party  filed  his  application,  the  decision 
of  the  Patent  Office  to  the  contrary,  does  not  raise  a 
sufficient  presumptio'n  of  validity  to  furnish  a  foundation 
for  a  preliminary  injunction  against  any  one.4 

§  675.  The  complainant's  title  to  the  patent  upon  which  a 
preliminary  injunction  is  asked  must  be  clear,  or  the  injunc- 
tion will  be  refused.5  The  best  evidence  of  that  title  is 
found  in  the  patent,  if  the  complainant  is  the  patentee  ;  but 
if  he  is  an  assignee  or  grantee,  he  must  produce  and  prove 
the  original  assignments  or  grants  which  constitute  his  title, 
or  otherwise  prove  his  ownership.6  Where  the  complain- 
ant's title  papers  require  judicial  construction,  in  order  to 
determine  their  legal  effect,  it  is  the  duty  of  the  court  to 
give  them  that  construction  upon  a  motion  for  a  preliminary 
injunction,  rather  than  to  postpone  the  question  to  a  final 
hearing,  unless  it  is  made  to  appear  that  evidence  aliunde 
is  necessary  to  their  proper  interpretation.7 


1  Pentlarge  v.  Beeston,  14  Blatch  ican  Button   Co.  61  Fed.  Rep.  650, 
354,    1877;  Holliday  «.   Pickhardt,  1894. 

12  Fed.  Rep.  147,  1882.  5  Mowry  v.  Railroad  Co.  5  Fisher, 

2  Edward  Barr  Co.  v.  Sprinkler  587,  1872. 

Co.  32  Fed.  Rep.  80,  1887.  6  Section  495  of  this  book. 

3  Greenwood  ».  Bracher,  1   Fed.  7  Clum  «.  Brewer,   2  Curtis,  507, 
Rep.  856,  1880.  1855;  Dodge  ».  Card,  2  Fisher,  116 

4  Empire  State  Nail'Co.  v.  Amer-  1860. 


CHAP.  XXI.]  INJUNCTIONS.  515 

§  676.  Infringement  or  danger  of  infringement  by  the 
defendant  must  be  clearly  proved  by  a  complainant,  in 
order  to  entitle  him  to  a  preliminary  injunction.1  Precisely 
what  facts  will  give  rise  to  such  a  probability  of  future 
infringement,  as  will  justify  a  preliminary  injunction  with- 
out proof  of  past  infringement,  cannot  specifically  be  stated. 
Courts  will  never  insist  on  absolute  proof  of  what  the 
defendant  will  do  if  not  enjoined  ;  for  such  proof  can  never 
be  produced,  and  because  it  cannot  harm  a  person  to  enjoin 
him  from  doing  a  thing  which  he  would  not  do  any  way.* 
A  moderate  probability  that  a  defendant  intends  to  do  some- 
thing which  would  clearly  infringe  the  complainant's  patent, 
will  therefore  be  sufficient  to  entitle  the  latter  to  a  prelimin- 
ary injunction  in  an  otherwise  proper  case.3 

Proof  of  infringement  cannot  be  made  by  affidavits  which 
merely  state  that  conclusion  of  fact.  The  complainant  must 
prove  the  specific  character  of  the  defendant's  doings.4 
Upon  that  evidence  the  court  will  examine  and  decide  the 
question  of  infringement  in  the  light  of  whatever  expert  tes- 
timony the  case  may  contain,5  and  in  the  light  of  whatever 
construction  of  the  patent  it  finds  on  examination  to  be 
just,6  and  that  construction  will  generally  be  guided  and 
governed  by  the  construction  which  was  given  to  the  patent 
in  the  adjudicated  case  upon  which  the  special  presumption 


1  Pullman  0.  Railroad  Co.  5  Fed.  Percha  Mfg.  Co.  56  Fed.   Rep.  264, 

Rep.  72. 1880;  California  Electrical  1892. 

Works  v.  Henzel,  48  Fed.  Rep.  377,  8  Sherman  «.  Nutt,  35  Fed.  Rep. 

1891;  Standard  Elevator  Co.  fl.Crane  149, 1888;  Sessions  v.  Gould,  49  Fed. 

Elevator  Co.  56  Fed.  Rep.  719, 1893;  Rep.  856,  1892. 

Brush  Electric  Co.  v.  Storage  Bat-  *  Kirby  Bung  Mfg.  Co.  ».  White, 

tery  Co.  64  Fed.  Rep.  776,  1894;  1  McCreary,  160,  1880. 

Qeo.  Ertel  Co.  v.  Stahl,  65  Fed.  6  Blanchard  v.  Reeves,  1  Fisher, 

Rep.  518,  1895;  Western  Telephone  105,  1850. 

Construction  Co.  «.  Stromberg,  66  B  Many  «.   Sizer,    1    Fisher,    83, 

Fed.  Rep.  551,  1895.  1849;  Clum  v.  Brewer,  2  Curtis,  507, 

8  California  Electrical  Works  ».  1855;  Coburn  v.  Clark,  15  Fed.  Rep. 

Henzel,   48  Fed.    Rep.   377,   1891;  807,  1883. 
New   York    Belting  Co.   v.  tQutta 


516 


INJUNCTIONS. 


[CHAP.  XXI. 


of  validity  is  based,1  and  where  the  facts  are  substantially 
the  same  in  the  two  cases,  the  former  decision  will  be  fol- 
lowed.2 But  if  the  court  is  unable  to  arrive  at  a  conclusion 
without  the  aid  of  further  evidence,  it  will  decline  to  grant 
the  injunction  till  that  evidence  is  supplied  ;  3  though  it  may 
require  the  defendant  to  give  bonds  and  to  keep  an  account 
of  his  doings  which  are  alleged  to  infringe ; 4  and  the  court 
will  not  grant  a  preliminary  injunction  where  the  question 
whether  the  defendant's  doings  constitute  an  infringement 
of  the  complainant's  patent  is  a  doubtful  question.5 

In  order  to  entitle  the  complainant  to  a  preliminary 
injunction,  it  is  not  necessary  for  him  to  prove  any  infringe- 
ment to  have  been  committed  or  threatened  within  the  par- 
ticular district  in  which  the  court  exercises  jurisdiction;6 
nor  that  the  defendant's  infringement  has  not  ceased  before 
the  motion  is  heard.7  Indeed  no  injunction  can  be  averted 
by  affirmative  evidence  that  the  defendant  has  ceased  to 
infringe,  even  though  coupled  with  a  promise  that  he  will 
infringe  no  more.8 


1  Mallory  Mfg.  Co.  «.  Hickok,  20 
Fed.  Rep.  116,  1884;  Carter-Crume 
Co.  0.   Ashley,  68  Fed.  Rep.  379, 
1895. 

2  8.  S.  White  Dental  Mfg.  Co.  v. 
Johnson,  56  Fed.  Rep.  263,  1893. 

3  United  States  Annunciator  Co. 
v.   Sanderson,    3  Blatch.  186,  1854; 
Howe  «.  Morton,  1  Fisher.  600.  I860; 
Boyd  v.   McAlpin,  3  McLean,  430, 
1844;  Carey  v.  Miller,  34  Fed.  Rep. 
392,  1888. 

4  Macbeth  v.  Lippencott  Glass  Co. 
54  Fed.  Rep.  167,  1893. 

5  Jenkins  «.  Ruberg,  39  Fed.  Rep. 
611,  1889;  Russell  v.  Hyde,  39  Fed. 
Rep.  614,  1889;  Boston  Electric  Co. 
v.  Holtzer,'41  Fed.  Rep.  390,  1890; 
Judson    L.    Thomson    Mfg.   Co.  v. 
Hatheway,  41  Fed.  Rep.  520,  1890; 
Culluloid  Mfg.  Co.  t>.  Eastman  Dry 
Plate  Co.   42  Fed.   Rep.  159,  1890; 
Hammond  Buckle  Co.  v.  Goodyear 


Rubber  Co.  49  Fed.  Rep.  274.  1892; 
Williams  v.  McNeely  56  Fed.  Rep. 
265,  1893;  Brush  Electric  Co.  ®. 
Storage  Battery  Co.  64  Fed.  Rep. 
775,  1894 

6  Wilson  v.    Sherman,  1   Blatch. 
541,  1850;  Wheeler  v.  McCormick, 
4  Fisher,  433,  1871;  Thompson  v. 
Mendelsohn,   5  Fisher,    188,   1871; 
Macauley  v.   Machine  Co.  9  Fed. 
Rep.  698,  1881. 

7  Jenkins  «.  Greenwald,  2  Fisher, 
37,  1857;  Potter  «  Crowell,  3  Fisher, 
112,   1866;    Goodyear    v.    Berry,  3 
Fisher,  439,  1868. 

8  Rumford    Chemical    Works  «. 
Vice,   14  Blatch.  179,  1877;  Cellu- 
loid Mfg.  Co.  v.  Mfg.  Co.  34  Fed. 
Rep.  324,  1888;  Gilmore  v.  Ander- 
son, 38  Fed.  Rep.  847,  1889;  White 
v.   Walbridge,  46  Fed.   Rep.  526, 
1891. 


CHAP.  XXI.]  INJUNCTIONS.  517 

§  677.  The  defences  which  a  defendant  may  make  to  a 
motion  for  a  preliminary  injunction  may  be  by  way  of 
traverse,  or  by  way  of  confession  and  avoidance.  A  defence 
of  the  former  sort  consists  in  denying,  and  attempting  to 
disprove,  one  or  more  of  the  facts  which  constitute  the  com- 
plainant's prima  facie  case.  A  denial  alone  is  useless,  even 
where  it  is  embodied  in  an  answer.1  Where  the  denial  is 
supported  by  affidavits  which  contradict  those  of  the  com- 
plainant, the  judge  will  refuse  the  injunction  if  he  believes 
the  defendant's  affidavits  to  be  the  true  ones,  or  if  he  is 
unable  to  decide  which  set  of  deponents  tell  the  truth.2  No 
remedy  invoked  in  patent  cases  is  so  summary  in  operation, 
or  so  dangerous  to  justice  as  a  preliminary  injunction,  and  the 
courts  will  not  apply  that  remedy  to  cases  where  the  complain- 
ant's prima  facie  evidence  of  a  right  thereto,  is  overthrown 
or  seriously  damaged  by  the  evidence  of  the  defendant. 

§  678.  Defences  by  way  of  confession  and  avoidance  to 
motions  for  preliminary  injunctions,  may  confess  and  avoid 
the  adjudication  or  acquiescence  upon  which  the  plaintiff 
bases  the  presumption  of  the  validity  of  his  patent ;  or  may 
interpose  any  one  of  several  facts  entirely  outside  of  the 
complainant's  prima  facie  case. 

§  679.  The  effect  of  an  adjudication  may  be  averted  by 
evidence  of  some  good  defence  to  the  patent,  together  with 
evidence  showing  that  defence  not  to  have  been  interposed 
in  the  prior  adjudicated  case.3  Several  Circuit  Courts  and 

1  Glum  «.  Brewer,  2  Curtis,  507,  Telegraph  Co.  18  Blatch.  125, 1880; 
1855.  Ladd  v.  Cameron,  25  Fed.  Rep.  37, 

2  Cooper    v.   Mattheys,  3    Perm.  1885;   Praim  v.   Iron  Co    27  Fed. 
Law  Journal  Reports,  40,  1842.  Rep.  457,  1886;  National  Machine 

»  Parker  v.  Brant,  1   Fisher,  58,  Co    v.   Hedden,  29  Fed.  Rep.  149, 

1850;  Union  Paper  Bag  Machine  Co.  1886;  Glaenzer  ».  Wiederer,  33  Fed. 

v.    Binney,    5    Fisher,    168,  1871;  Rep.  583,  1887;  Holmes  Protective 

American  Nicolson  Pavement  Co.  Co.  v.  Alarm  Co.  31  Fed.  Rep.  562, 

v.   Elizabeth,   4  Fisher,  189,  1870;  1887;  Travers  «.    Spreader  Co.  85 

Bailey  Wringing   Machine    Co.  v.  Fed.  Rep.  133, 1888;  Stuart  v.  Thor- 

Adams,   3  Bann.   &  Ard.  97,  1877;  man,  37  Fed.  Rep.  90,  1888;  Jacob- 

Goodyear  v.   Allyn,   6  Blatch.   35,  son  v.  Alpi,  46  Fed.  Rep.  767,  1891; 

1868;     Robinson    v.    Randolph,   4  Carter  v.   Fry,  54  Fed.  Rep.   883, 

Bann.  &  Ard.    163,   1879;  Page   v.  1892. 


518  INJUNCTIONS.  [CHAP.  xxi. 

two  Circuit  Courts  of  Appeals  have  held  that  such  a  new 
defence  must  be  established  beyond  a  reasonable  doubt ; a 
and  a  new  defence,  which  cannot  endure  the  application  of 
what  was  decided  in  the  adjudicated  case,  must  fail  to  avert 
a  preliminary  injunction.2  But  the  effect  of  a  prior  adjudi- 
cation may  sometimes  be  averted  by  showing  that  it  is 
inconsistent  with  a  former  decision  of  the  court  wherein  the 
adjudged  case  is  invoked,3  or  by  showing  that  the  adjudged 
case  involved  questions  of  nicety  and  importance,  and  has 
been  taken  to  a  higher  court  for  review,4  or  has  gone  no 
further  than  a  verdict  of  a  jury  which  is  still  pending  on  a 
motion  for  a  new  trial.5  But  courts  will  not  always  disre- 
gard adjudications  which  are  thus  suspended.  They  are  a 
good  foundation  for  preliminary  injunctions,  unless  the 
defendant  can  convince  the  judge  that  they  were  wrong.6 
The  effect  of  a  prior  adjudication  can  sometimes  be  averted 
by  showing  that  there  has  been  an  adjudication  against  the 
validity  of  the  patent,7  but  not  where  it  appears  that  the 
lost  cause  was  decided  on  a  part  only  of  the  material  evi- 
dence,8 nor  can  such  an  effect  be  averted  by  showing  that 
the  validity  of  the  patent  is  in  question  in  some  other  case, 
which  has  long  been  pending  and  still  aw^aits  adjudication.9 
Where  the  patent  sued  upon  is  a  reissue  of  the  one  adjudi- 
cated, a  substantial  doubt  of  the  validity  of  the  reissue  as 


1  Accumulator  Co.  v.  Storage  Co.  4  Morris  «.  Mfg.  Co.  3  Fisher,  70, 
53  Fed.    Rep.   800,    1893;     Edison  1866. 

Electric  Light  Co.  v.  Beacon  Elec-  5  Day  «.  Hartshorn,  3  Fisher,  34, 

trie  Co.  54   Fed.    Rep.  679,    1893;  1855. 

Edison  Electric  Light  Co.  •».  Elec-  6  Forbush  v.  Bradford,  1  Fisher, 

trie  Mfg  Co.  57  Fed.  Rep.  616, 1893;  317,  1858;  Day  v.  Hartshorn,  3  Fish- 

Electric  Mfg.  Co.  •».  Edison  Electric  er,  32,  1855;  Morris  «.  Mfg.  Co.  3 

Light  Co.  61  Fed.  Rep.  834,  1894;  Fisher.   70,   1866;  Wells  v.   Gill,  6 

Philadelphia  Trust  Co.  «.  Edison  Fisher,  89,  1872. 

Electric    Light  Co.   65  Fed.  Rep.  7  Reyes  «.  Refining  Co.  31  Fed. 

553,  1895.  Rep.  560,  1887. 

2  Sawyer  Spindle  Co.  v.  Taylor.  8  United  States  Stamping  Co.  v. 
56  Fed.  Rep.  110,  1892.  King,  4  Bann.  &  Ard.  469,  1879. 

3  Pullman  Palace  Car  Co.  v.  Wag-  9  Atlantic  Giant   Powder  Co.   v. 
ner  Palace  Car  Co.  44  Fed.  Rep.  Goodyear,  3  Bann.    &.    Ard.   161, 
765, 1891.  1877. 


CHAP.  XXI.]  INJUNCTIONS.  519 

a  reissue,  must  be  solved  against  a  motion  for  a  preliminary 
injunction.1 

§  680.  The  effect  of  acquiescence,  as  a  foundation  for  a 
preliminary  injunction,  may  be  averted  by  evidence  that  it 
was  not  general,  or  was  not  genuine ;  by  proof  that  while 
some  acquiesced  in  the  patent,  many  others  did  not  ;  or  by 
proof  that  those  who  did  acquiesce,  did  so  collusively  and 
not  because  they  believed  the  patent  to  be  invulnerable- 
And  the  effect  of  acquiescence  may  also  be  averted  by  evi- 
dence or  arguments  which  clearly  show  that  the  patent  is 
really  invalid.2 

§  681.  While  the  fact  that  the  patent  in  suit  will  soon 
expire,  is  a  reason  for  granting  an  injunction  rather  than  a 
reason  for  refusing  that  remedy  ; 3  the  fact  that  the  patent 
sued  upon  has  been  repealed,  or  that  it  has  expired  by  its 
own  limitation,  or  because  of  the  expiration  of  some  foreign 
patent  for  the  same  invention,  is  of  course  a  good  defence 
to  a  motion  for  a  preliminary  injunction  ;  as  also  is  any  fact 
which  overthrows  the  title  of  the  complainant ;  or  any  fact 
which  shows  the  conduct  of  the  complainant  or  his  privies 
to  be  unjustifiable  in  the  eye  of  equity.4 

§  682.  A  license  is  a  good  defence  to  a  motion  for  a  pre- 
liminary injunction ;  and  where  the  affidavits  leave  the 
existence  of  a  valid  license  in  doubt,  a  preliminary  injunc- 
tion will  be  refused.5  Where  the  question  of  license 
depends  upon  the  construction  of  documents,  the  court  will 
construe  them  on  a  motion  for  a  preliminary  injunction, 
unless  it  is  made  to  appear  that  evidence  exists  which  is 
proper  and  necessary  to  be  produced  in  order  to  enable 


1  Poppenhusen  v.  Falke,  2  Fisher,  1893;  Carter-Grume  Co.  •».  Ashley, 
181,  1861.  68  Fed.  Rep.  379,  1895 ;    Woodard 

2  Bradley  &  Hubbard  Mfg.  Co.  v.  v.  Gas-Stove  Co.  68  Rep.  Rep.  717. 
The   Charles  Parker  Co.  17  Fed.  1895. 

Rep.  240,  1883;  Hat-Sweat  Mfg.  Co.  *  Western  Union  Telegraph  Co. 

v.  Sewing  Machine  Co.  32  Fed.  Rep.  «.  Telegraph  Co.  25  Fed.  Rep.   80, 

403,  1887.  1885. 

3  American  Bell  Telephone  Co.  v.  6  Beane  v.  Orr,  2  Bann.   &  Ard. 
Brown  Tel.  Co.   58  Fed.  Rep.  409,  176,  1875. 


520  INJUNCTIONS.  [CHAP.  xxi. 

the  judge  to  arrive  at  the  intention  of  the  parties  to  an 
ambiguous  instrument.1  Where  the  license  set  up  has  been 
forfeited  for  non-payment  of  the  royalty,  a  preliminary 
injunction  will  be  granted,  in  an  otherwise  proper  case, 
unless  the  defendant  pays  that  royalty  within  some  reason- 
able time  to  be  fixed  by  the  court ; 2  and  where  it  has  been 
forfeited  by  a  forbidden  use  of  the  patented  thing,  a  pre- 
liminary injunction  may  be  granted  as  to  that  use,  but  not 
as  to  the  kind  of  use  authorized  by  the  license.3  The  prin- 
ciple of  these  precedents  appears  to  be  that  a  preliminary 
injunction  will  not  be  used  to  enforce  a  forfeiture,  when  the 
doings  which  caused  the  forfeiture  can  be  otherwise  com- 
pensated. So,  also,  a  preliminary  injunction  will  be  refused 
where  the  defendant  had  a  license  which  he  forfeited  by 
omission  to  pay  the  royalty,  if  that  omission  was  necessi- 
tated by  bad  faith  on  the  part  of  the  complainant.4 

§  683.  Estoppel  is  also  a  good  defence  to  a  motion  for  a 
preliminary  injunction,  and  will  prevail  against  a  motion 
for  that  relief,  upon  the  same  facts  that  would  make  it  pre- 
vail in  an  action  at  law.5 

§  684.  Laches  is  a  good  defence  to  a  motion  for  a  prelim- 
inary injunction ; 6  and  delay  works  laches,  unless  it  is 
excused  by  some  fact  which  renders  it  reasonable.7  The 
delay  which,  if  unexcused,  works  laches  in  respect  of  an 
application  for  a  preliminary  injunction,  is  that  which  occurs 
after  the  infringement  sued  upon  was  committed,8  and  not 


1  Hodge  v.  Railroad  Co.  6  Blatch.  6  Sections  467  to  469  of  this  book. 
165,  1868.  6  Hockholzer  •».  Eager,  2  Sawyer,. 

2  Woodworth  ®.  Weed,  1  Blatch.  363,   1873;    Keyes  v.   Refining  Co. 
165,  1846;  Goodyear  v.  Rubber  Co.  31  Fed.  Rep.  560,  1887;  Brush  Elec- 
3  Blatch.  455.  1856.  trie  Co.  «.   Storage  Battery  Co.  64 

3  Wilson  v.   Sherman,  1  Blatch.  Fed.  Rep.  777,  1894 

536,  1850.  7  Wortendyke  v.  White,  2  Bann. 

4  Crowell  v.  Parmeter,  3  Bann.  &  &  Aril.  26,  1875;  Green  v.  French,  4 
Ard.  480, 1878;  Washburn  &  Moen  Bann.   &  Ard.  169,  1879;  Collignon 
Mfg.  Co.  «.  Barbed  Wire  Fence  Co.  ».  Hayes,  8  Fed.  Rep.  912,  1881. 

22  Fed.  Rep.  712,1884;  Washburn  8  American  MiddlingsJPurifier  Co. 

&  Moen  Mfg.    Co.  «.  Scutt  Co.  22  «<   Christian,   3  Bann.  &  Ard.   50, 

Fed.  Rep.  710,  1884.  1877. 


CHAP.  XXI.]  INJUNCTIONS.  521 

any  delay  which  occurred  before  that  time.  Delay  after 
the  infringement,  may  occur  before  the  suit  is  brought,  or 
it  may  occur  after  that  event,  and  before  any  motion  is 
made  for  a  preliminary  injunction. 

Three  months'  delay  of  the  first  kind,  for  which  there 
was  no  particular  excuse,  and  which  caused  no  injury  to  the 
defendant,  has  been  held  not  to  constitute  laches  ; l  and  in 
another  case  the  delay  of  one  year  was  likewise  condoned.3 
In  another  case,  eighteen  months',8  and  in  another  two 
years',4  and  in  another  three  years'5  delay  after  the  known 
beginning  of  infringement,  and  before  the  beginning  of  a 
suit,  was  held  to  constitute  such  laches  as  must  defeat  a 
motion  for  a  preliminary  injunction ;  and  in  still  another 
case  a  delay  of  two  years  by  the  then  owners  of  the  patent> 
was  held  to  preclude  their  assignees  from  obtaining  a  pre- 
liminary injunction.6  Two  years'  delay  to  sue  was  excused 
in  one  case  on  the  ground  that  the  complainant  was  much 
occupied  with  other  business  during  the  time,  and  that  he 
repeatedly  notified  the  defendant  to  cease  his  infringing  ; 7 
and  in  another  case  a  delay  of  twenty-eight  months  was 
excused  on  the  ground  that  during  most  of  that  time  the 
infringement  was  so  small,  as  to  be  harmless,  and  was  likely 
to  continue  so  ; 8  but  in  another  case  four  years'  delay  was 
held  to  be  too  long  to  be  excused  on  that  ground.9  The 
pendency  of  a  test  case  under  a  patent  is  also  a  good 
excuse  for  delay  in  bringing  actions  against  other  in- 
fringers,  when  those  other  infringers  interpose  the  defence 


1  Union  Paper  Bag  Machine  Co.  B  Spring  v.  Machine  Co.  4  Bann. 
v.  Binney.  5  Fisher,  167,  1871.  &  Ard.  428,  1879. 

2  Loring  v.  Booth,  52  Fed.  Rep.  7  Collignon  «.  Hayes,  8  Fed.  Rep. 
151,  1892.  912,  1881. 

3  Hockholzer  v.  Eager,  2  Sawyer,  8  Accumulator  Co.  v.  Edison  Illu- 
363,  1873.  minating    Co.   63  Fed.   Rep.    979, 

4  Sperry  v.  Ribbans,  3  Bann.  &  1894. 

Ard.  261,  1878.  »  Brush  Electric  Co.  «.  Storage 

8  Pope  Mfg.  Co.  v.  Johnson,  40  Battery  Co.  64  Fed.  Rep.  777,  1894. 
Fed.  Rep.  584,  1889.. 


522  INJUNCTIONS.  [CHAP.  XXI. 

of  laches  to  a  motion  for  a  preliminary  injunction.1 
Two  months'  unexcused  delay  after  a  suit  is  begun,  before 
a  motion  for  a  preliminary  injunction  is  made,  is  fatal  to 
such  a  motion,  where  the  delay  seriously  misleads  the 
defendant ;  2  and  delay  after  a  suit  is  begun  will  constitute 
such  laches  as  will  defeat  an  application  for  a  preliminary 
injunction,  if  that  delay  continues  till  the  defendant  has 
closed  his  evidence  for  the  interlocutory  hearing  of  the 
case ; 3  and  still  more  strongly,  when  it  continues  till  the 
case  is  about  to  be  argued  on  the  interlocutory  hearing.4 

§  685.  Where  the  complain  ant  has  made  out  a  prinia  facie 
case  for  a  preliminary  injunction,  and  where  the  defendant 
has  not  overthrown  that  case,  the  court  is  generally  bound 
to  grant  such  an  injunction,5  upon  all  or  upon  part  of  the 
claims  of  the  patent,  according  to  the  merits  of  the  case.6 
The  effect  of  the  injunction  upon  others  than  the  parties 
to  the  suit,  cannot  commonly  be  considered  on  such  a 
motion ;  and  while  the  judges  fully  appreciate  the  harsh 
and  arbitrary  character  of  a  preliminary  injunction  in  a 
patent  case,  they  also  know  the  innumerable  obstacles  which 
beset  a  recovery  of  damages  or  profits,  and  that  there  is 
generally  no  adequate  remedy  for  infringement  pendente 
lite,  other  than  a  preliminary  injunction.7  Under  some 


1  VanHook  v.  Pendleton,!  Blatch.  6  Gibson  «.  Van  Dresar,  1  Blatch. 
187,     1846;       Rumford     Chemical  535,    1850;    Sickels    v.   Mitchell,    3 
Works®.  Vice,  14  Blatch.  181, 1877;  Blatch.  548,  1857;  Sickels  v.  Tiles- 
Green  v.   French,   4  Bann  <fc  Ard.  ton,  4  Blatch.  109,  1857;  Potter  v. 
169,  1879;  Colgate  v.  Gold  &  Stock  Fuller,  2  Fisher,  251, 1862;  Conover 
Telegraph  Co.  4  Bann  &  Ard.  425'  v.  Mers,  3  Fisher,  386,  1868;  Ely  v. 
1879;  Edison  Electric  Light  Co.  v.  Mfg.  Co.  4  Fisher,  64,  1860;  Rum- 
Sawyer-Man  Electric  Co.  53  Fed.  ford  Chemical  Works,  v.  Vice,  14 
Rep.    597,    1892;    Edison  Electric  Blatch.  181,   1877;    American  Mid- 
Light  Co.  0.  Mt.   Morris  Electric  dlings  Purifier  Co.  v.  Christian,  3 
Light  Co.  58  Fed.  Rep.  572,  1893.  Bann.   &  Ard.   54,   1857;  Green  v. 

2  Ney  Mfg.   Co.  v.   Drill  Co.  56  French,  4  Bann.  &  Ard.   169,  1879- 
Fed.  Rep.  154,  1893.  6  Colt  v.  Young.   2  Blatch.   471, 

2  Wooster  ».  Machine  Co.  4  Bann.  1852;  Potter  v  Holland,  1  Fisher, 

&  Ard.  319,1879.  382,  1858. 

4  Andrews  v.  Spear,  3  Bann.  &  7  Carter  ®.  Wollschlaeger,  53  Fed. 

Ard.  80,  1877.  Rep.  576,  1892. 


CHAP.  XXI.]  INJUNCTIONS.  523 

circumstances,  however,  the  court  can  give  the  defendant  the 
option  to  submit  to  such  an  injunction,  or  to  give  a  bond  to 
secure  any  decree  for  profits  or  damages  which  may  ulti- 
mately be  awarded  against  him  ;  but  a  bond  can  be  required 
only  in  a  case  where  an  injunction  must  issue  if  the  bond 
is  not  given.1  The  circumstances  under  which  it  is  proper 
to  give  the  defendant  that  option  include  the  following. 

§  686.  Bonds  may  be  taken,  instead  of  preliminary 
injunctions  being  imposed,  if  the  complainant  habitually 
avails  himself  of  his  exclusive  right  by  receiving  royalties 
for  licenses,  rather  than  by  making  and  selling,  or  making 
and  using  the  patented  article  himself  while  permitting  no 
other  to  do  so ; 2  but  this  course  of  business  of  the  com- 
plainant is  not  otherwise  a  defence  to  a  motion  for  a  prelim- 
inary injunction.3  And  where  the  complainant  is  able  and 
willing  to  supply  the  market  for  that  article,  the  fact  that 
the  defendant  is  willing  to  take  a  license,  and  able  to  pay 
for  one,  does  not  entitle  him  to  the  option  of  giving  bonds, 
if  the  complainant  declines  to  give  him  a  license.4 

§  687.  So,  also,  a  defendant  may  sometimes  be  entitled 
to  the  option  of  giving  bonds  instead  of  being  enjoined, 
where  his  infringing  machinery  contains  costly  parts  which 
are  not  covered  by  the  complainant's  patent  ;5  but  he  is  not 


1  Forbush  v.  Bradford,  1   Fisher,  128,  1883;  Eastern  Paper  Bag  Co.  t>. 
317,  1858;  American  Middlings  Pu-  Nixon,  35  Fed.  Rep.  752,  1888;  Pal- 
rifier  Co.  e.  Atlantic  Milling  Co.  3  mer  «.  Mills,  57  Fed.    Rep,   222, 
Bann.  &  Ard.  173,  1877.  1893. 

2  Howe  v.  Morton,  1  Fisher,  601,  3  Kennedy  v.  Penn.   Iron  &  Coal 
1860 ;    Hodge   «.    Railroad  Co.    6  Co.  67  Fed.  Rep.  340,  1895. 
Blatch.  166,  1868;  Dorsey  Harvester  4  Baldwin  v.  Bernard,  5  Fisher, 
Rake  Co.  «.   Marsh,  6  Fisher,  387,  447,  1872;  Westinghouse  Air  Brake 
1873;  Colgate  v.  Gold  &  Stock  Tel-  Co.  «.  Carpenter.  32  Fed.  Rep.  545, 
egraph   Co.   16  Blatch.  503.   1879,  1887. 

Kirby  Bung  Mfg.   Co.  «.  White,   I  5  Howe  v.  Morton,  1  Fisher,  587, 

McCrary,   155,    1880 ;    New   York  1880;    Stainthorp    «.  Humiston,  2 

Grape  Sugar  Co.  v.  American  Grape  Fisher,   311,   1862;  Eagle  Mfg.  Co. 

Sugar  Co.  10  Fed.  Rep.  837,  1882;  «.  Plow  Co.  36  Fed.  Rep.  907,  1888. 
McMillan  v.  Conrad,  16  Fed.  Rep. 


524  INJUNCTIONS.  [CHAP.  xxi. 

thus  entitled  in  all  such  cases.1  And  a  defendant  may  be 
entitled  to  that  option  where  the  infringing  article  was  pur- 
chased in  good  faith,  having  been  constructed  in  conformity 
to  a  junior  patent ; 2  or  where  it  was  so  constructed  by  the 
defendant  himself;  or  where  the  defendant  is  only  a  seller 
of  specimens  of  the  patented  article,  a  suit  being  pending 
against  the  manufacturer  from  whom  he  received  those 
specimens;3  or  where  the  prior  adjudication  upon  which 
the  right  to  a  preliminary  injunction  is  based  has  been 
appealed  to  a  higher  court,  and  is  still  pending  there ; 4  or 
where  new  evidence  is  to  be  taken  for  the  interlocutory 
hearing;5  or  where  the  injunction,  if  granted,  would  be  very 
damaging  to  the  interests  of  the  defendant,  and  not  particu- 
larly beneficial  to  the  legitimate  rights  of  the  complainant;6 
or  where  public  policy  forbids  a  discontinuance  of  the 
defendant's  use  of  the  patented  invention;7  or  where  the 
complainant  does  not  himself  employ  the  invention ; 8  or 
where,  for  any  reason,  a  preliminary  injunction  would  ope- 
rate unjustly.9  It  is  no  part  of  the  legitimate  office  of  a 
preliminary  injunction  to  force  the  defendant  to  compromise 
a  disputed  claim,10  nor  to  compel  him  to  give  the  complain- 


1  Edison  Electric   Light  Co.    «.  1883-  Consolidated  Roller  Mill  Co. 
Sawyer-Man  Electric  Co.  53  Fed.  <o  Richmond  Mill  Works,  40  Fed. 
Rep.  597,  1892.  Rep.    474,    1889;    Edison    Electric 

2  United  States  Annunciator  Co.  Light  Co.  v.  Mt.  Morris  Electric 
v.  Sanderson,  3  Blatch.  184, 1854.  Light  Co.  58  Fed.  Rep.  575,  1893. 

3  Irwin  v.  McRoberts,  4  Bann.  &         7  Guidet  v.  Palmer,  10  Blatch.  220, 
Ard  414,  1879.  1872. 

4  Wells  v.  Gill,  6  Fisher,  93,  1872.          »  Hoe  «.  Knap,  27  Fed.  Rep.  212, 

5  Norton  v.  Automatic   Can  Co.  1886. 

61  Fed.  Rep.  296,  1894.  9  Union  Paper  Bag  Machine  Co. 

8  Morris  «.  Mfg.  Co.  3  Fisher,  68,  v.  Binney,  5  Fisher,  169,  1871;  Na- 

1866;  Morris  «.  Shelbourne,  4  Fisher,  tional  Cable  Ry.  Co.  0.  Sioux  City 

377,  1871;  Dorsey  Harvester  Rake  Cable  Ry.  Co.  42  Fed.  Rep.  685, 

Co.  «.  Marsh,  6  Fisher,  387,  1873;  1890. 

Kirby  Bung  Mfg.  Co.  v.  White,  1          10  Morris  v.  Mfg.  Co.  3  Fisher,  70, 

McCrary,  155,  1880;  Hoe  ®.  Boston  1866. 
Daily  Advertiser,  14  Fed.  Rep.  91 4, 


CHAP.  XXI.]  INJUNCTIONS.  525 

ant  a  contract  to  purchase  specimens  of  the  patented  thing.1 
But  in  the  absence  of  every  special  reason  for  giving  the 
defendant  the  option  of  giving  bonds,  instead  of  submitting 
to  an  injunction,  that  option  cannot  be  demanded  by  him,2 
nor  ought  it  ta  be  granted  by  the  court.3  Where  the  defend- 
ant is  entitled  to  the  option  of  giving  bonds  or  being 
enjoined,  and  chooses  the  former  alternative,  but  is  unable 
to  furnish  the  bonds  promptly,  an  injunction  may  issue 
against  him,  coupled  with  an  order  for  its  dissolution  when- 
ever the  proper  bonds  are  approved  and  filed.4 

§  688.  Bonds  may  be  required  from  a  complainant,  under 
some  circumstances,  before  a  preliminary  injunction  will  be 
granted.5  Such  bonds  are  conditioned  on  the  ultimate  suc- 
cess of  the  complainant  in  sustaining  his  claim,  and  may  be 
required  in  a  case  where  the  injunction,  if  granted,  will 
cause  serious  injury  to  the  defendant.6  If  that  is  also  a 
case  where  the  defendant  is  entitled  to  avert  the  injunction 
by  giving  a  bond,  that  option  will  first  be  given  to  him.  If 
he  chooses  to  file  a  bond,  of  course  none  will  be  required 
from  the  other  side,  but  if  he  prefers  to  submit  to  an  injunc- 
tion, the  injunction  will  be  granted  only  upon  the  filing  of 
a  proper  indemnity  bond  by  the  complainant. 

§  689.  A  preliminary  injunction  cannot  be  averted  on  the 
sole  ground  that  an  action  at  law  for  the  damages  to  be 


1  American    Nicolson   Pavement  Hills,  3  Fisher,  134,  1866,  Sykes  «. 
Co.  v.  Elizabeth,  4  Fisher.  197, 1870.  Manhattan  Co.  6  Blatch.  496,  1869; 

2  Consolidated    Fruit-Jar  Co.  v.  Gilbert  <fe  Barker  Mfg.  Co.  «.  Buss- 
Whitney,  1  Bann.  &  Ard.  361,  1874.  ing,  12  Blatch.  426, 1875. 

3  Gibson  v.  Van  Dresar,  1  Blatch.  5  Tobey  Furniture  Co.  v.  Colby, 
532, 1850;  Tracy  v.  Torrey,  2  Blatch.  35  Fed.  Rep.  594, 1888;  Brush  Elec- 
275,  1851;  Tilghman  v.  Mitchell,  4  trie  Co.  v.  Accumulator  Co  50  Fed. 
Fisher,  615, 1871;  Me  Williams  Mfg.  Rep.  .833,  1892;  Accumulator  Co.  «. 
Co.  v.  Blundell,  il  Fed.  Rep.  419,  Storage  Co.  53  Fed.  Rep.  800,  1893. 
1882.  6  Orr  v.  Littlefield,  1  Woodbury  <fc 

4  Brooks  v.  Bicknell,  3  McLean,  Minot,  20,  1845;  Brammer  v.  Jones, 
250  1843;  Foster  v.  Moore,  1  Curtis,  8  Fisher,  340,  1867;  Shelly  «.  Bran- 
279,1852;  Howe «.  Morton,  1  Fisher,  nan,  4  Fisher,  198,  1870;  Consoli- 
586,  1860;  Stainthorp  v.  Humiston,  dated  Fruit-Jar  Co.  t>.  Whitney,  1 
2  Fisher,   311,    1862;    Goodyear  v.  Bann.  &  Ard.  361,  1874. 


526  INJUNCTIONS.  [CHAP.  XXI. 

caused  by  the  infringement  would  be  a  plain,  adequate  and 
complete  remedy  therefor.  In  many  cases  that  would  not 
be  true,  and  the  court  cannot  determine  on  affidavits  whether 
it  would  be  true  in  a  particular  case  or  not.  A  motion  for 
a  preliminary  injunction  is  not  to  be  defeated  on  a  possi- 
bility that  the  complainant  might  be  able  to  obtain  damages 
for  the  wrong  which  he  seeks  to  prevent.  But  even  where 
it  is  plain  that  the  damages  recoverable  in  an  action  at  law 
would  be  as  beneficial  to  the  complainant  as  an  injunction 
would  be,  that  fact  does  not  oust  the  right  of  the  complain- 
ant to  the  latter  relief.  The  case  is  analogous  to  actions  in 
equity  for  the  specific  performance  of  contracts  to  sell  real 
property.  The  bills  in  such  cases  seldom  show,  and  never 
are  required  to  show,  that  an  action  at  law  for  damages 
would  not  be  a  plain,  adequate  and  complete  remedy  for 
the  failure  to  perform.  "  Ordinarily  a  vendor,  in  the  recov- 
ery of  pecuniary  damages,  has  an  adequate  remedy  at  law, 
but  he  has  a  choice  of  remedies.  He  may  resort  either  to 
a  court  of  law  or  a  court  of  equity."1  Bills  for  preliminary 
injunctions  in  patent  cases  are  never  obnoxious  to  Section 
723  of  the  Revised  Statutes,  because  the  word  "case"  in 
that  section  is  to  be  interpreted  specifically  and  not  generi- 
cally.  "  Suits  in  equity  shall  not  be  sustained  in  either  of 
the  courts  of  the  United  States  in  any  case  where  a  plain, 
adequate  and  complete  remedy  may  be  had  at  law."2  This 
statute  regards  an  action  in  equity  to  restrain  infringement 
of  a  patent  as  a  case  for  an  injunction,  and  not  merely  as  a 
patent  case.  It  therefore  opposes  no  obstacle  to  the  juris- 
diction of  equity  in  such  a  case. 

§  690.  Where  the  defendant  withdraws  his  opposition  to 
a  motion  for  a  preliminary  injunction  before  the  motion  is 
decided,  the  injunction  will  be  granted  pro  confesso,  and  the 
court  will  decline  to  render  a  decision.3  That  is  to  say :  a 


1  Crary   v.    Smith,   2    Comstock         3  American  Middlings  Purifier  Co. 
(N.  Y.).  62,  1848.  v.  Vail,  15  Blatch.  315,  1878. 

2  Revised  Statutes,  Section  723. 


CHAP.    XXI.J  INJUNCTIONS.  527 

consent  decree  will  be  entered  as  a  consent  decree,  and  not 
as  one  based  on  a  conclusion  of  the  judicial  mind.  If  this 
rule  were  otherwise,  parties  between  whom  there  continued 
to  be  no  real  contest  might  manage  to  secure,  decisions 
from  courts  which  would  operate  to  their  mutual  advantage, 
and  to  the  serious  disadvantage  of  strangers  to  the  litigation. 

§  691.  The  discretion  of  the  court  was  said  in  some  of  the 
older  cases  to  be  the  real  criterion  of  judgment  when 
deciding  motions  for  preliminary  injunctions  in  patent 
cases.  The  doctrine  was  a  necessity  in  the  beginning  of 
the  evolution  of  the  patent  laws,  because  the  judges  could 
then  find  but  few  precedents  to  guide  or  to  warn.  At 
present  the  fact  is  otherwise.  Approved  precedents  can 
now  be  found  on  nearly  every  point  that  can  arise. 

There  was  recently  a  sense  in  which  the  granting  or 
refusing  such  a  writ  could  truly  be  said  to  rest  in  the  dis- 
cretion of  the  judge.  It  so  rested,  in  the  sense  that  no 
appeal  could  be  taken  from  his  decision.  But  that  fact  was 
not  a  reason  why  a  judge  should  have  been  asked  to  disre- 
gard precedents  when  making  up  his  judicial  opinion.  And 
it  is  now  the  law  that  an  appeal  may  be  taken  from  any 
order  granting,  continuing,  refusing,  dissolving  or  refusing 
to  dissolve  a  preliminary  injunction.1  This  liberal  allow- 
ance of  appeals,  may  be  thought  to  justify  or  excuse  less 
careful  consideration  of  motions  for  preliminary  injunctions, 
than  was  formerly  expected  from  the  circuit  courts ;  but  the 
delays  and  expenses  incident  to  such  appeals,  will  doubtless 
deter  the  judges  from  taking  that  view. 

§  692.  A  motion  to  dissolve  a  preliminary  injunction  may 
be  made  at  any  time,8  upon  reasonable  notice  to  the  com- 
plainant's solicitor  ;  3  and  it  will  be  promptly  granted  where 
the  judge  becomes  convinced  that  the  granting  of  the 

1  28  Statutes  at  Large,  Chap.  96,      Bank,  5  How.  (Miss.),  48.  1840. 

p.  666.  3  Wilkins  v.  Jordan,  3  Washiug- 

2  Minturn  «.    Seymour,   4  John-  ton,  226,  1818;  Caldwell  e.  Waters, 
son's     Chancery     ( N.    Y. ),     173,  4  Cranch's  Circuit  Court  Reports , 
1819;  Cammack  ®.  Johnson,  2  New  577,  1835. 

Jersey  Equity,  163,  1839;  Jones  D. 


528  INJUNCTIONS.  [CHAP.  xxi. 

injunction  was  erroneous  in  point  of  law,1  or  where  the 
defendant  positively  proves  any  ,fact  which  would  have 
been  fatal  to  the  motion  for  the  preliminary  injunction,  if 
presented  at  the  time  that  motion  was  heard,  and  shows 
that  the  evidence  could  not  with  reasonable  diligence  have 
been  presented  at  that  hearing.2  So,  also,  a  dissolution  of 
a  preliminary  injunction  may  be  based  on  a  fact  which 
arose  after  the  injunction  was  granted :  for  example,  on  the 
fact  that  the  complainant,  after  that  event,  assigned  all  his 
interest  in  the  future  duration  of  the  patent  to  another ; 3  or 
on  the  fact  that  he  omitted^to  prosecute  his  case  toward  an 
interlocutory  hearing  with  the  speed  which  the  rules  of 
court  require.4  And  power  to  dissolve  or  suspend  a  pre- 
liminary injunction  resides  in  a  Circuit  Court,  even  after 
the  injunction  has  been  affirmed  by  the  Circuit  Court  of 
Appeals.5 

§  693.  A  motion  to  dissolve  an  injunction  for  error  in 
point  of  law,  must  be  based  on  a  point  which  was  estab- 
lished after  the  injunction  was  granted,  or  which  was  obvi- 
ously overlooked  or  mis  weighed  by  the  judge  at  that  time. 
It  would  be  unprofessional  as  well  as  unavailing  for  counsel 
to  move  a  dissolution,  on  the  ground  that  the  judge  wrongly 
reasoned  out  his  conclusion  from  the  premises  from  which 
he  proceeded.  Courts  ought  not  to  be  asked  to  change  their 
judgments  on  points  of  law,  unless  the  law  has  changed  or 
been  newly  formulated  in  the  mean  time,  or  unless  some 
special  error  can  be  pointed  out.  Few  things  are  more 
trying  to  the  patience  of  judges,  or  more  useless  to  the 


1  Steam  Gauge  &  Lantern  Co.   ».  892,1891. 

Miller,  11  Fed.  Rep.  719,  1882.  STarkhurst®.  Kinsman,  1  Blatch. 

2  Woodworth  «.  Rogers,  3  Wood-  489,    1849;    Edison  Electric  Light 
bury  &  Minot,   135,  1847;  Hussey  Co.   v     Buckeye    Electric    Co.    59 
v.  Whiteley,  2  Fisher,   125,   I860;  Fed.  Rep.  699,  1894. 

Young  v.  Lippman,  5   Fisher,  230,  4  Robinson  «.  Randolph;  4  Bann. 

1872!  Carey  v.   Spring  Bed  Co.  26  &  Ard.  318,  1879. 

Fed.  Rep.  38,   1886;  Huntington  v.  5  Edison  Electric  Light  Co.  v.  U. 

Heel  Plate  Co.  33  Fed.  Rep.  838,  S.   Electric  Lighting  Co.   59  Fed. 

1888;    Electrical  Accumulator  Co.  Rep.  501,  1892. 

®.  Julien  Electric  Co.  47  Fed.  Rep. 


CHAP.  XXI.]  INJUNCTIONS.  529 

interests  of  clients,  than  the  repetition  of  old  and  well- 
understood  arguments. 

§  694.  Motions  to  dissolve  an  injunction  on  account  of 
newly  discovered  facts,  require  the  mover  to  assume  the 
burden  of  establishing  those  facts,  because  when  an  injunc- 
tion is  once  granted,  it  is  presumed  to  have  been  granted 
rightfully,  until  the  contrary  is  made  to  appear.1  The  con- 
trary can  seldom  or  never  be  made  to  appear  in  a  patent 
case,  by  means  of  the  defendant's  answer ;  because  the 
answer,  as  far  as  it  refers  to  the  validity  of  the  patent  and  of 
the  complainant's  title  thereto,  is  generally  made  on  informa- 
tion and  belief  only,  and  as  far  as  it  refers  to  the  defend- 
ant's infringement,  it  amounts  only  to  a  general  denial. 
Where  an  answer  is  on  file  at  the  time  the  motion  to  dissolve 
is  heard,  the  injunction  will  not  be  dissolved  on  the  strength 
of  any  facts  which  are  not  set  up  in  the  answer ; 2  but 
whether  an  answer  is  on  file  at  that  time  or  not,  the  facts 
upon  which  the  motion  is  based  must  be  shown  by  affida- 
vits or  by  other  admissible  evidence  ;  though,  if  an  answer 
is  on  file,  it  may  be  used  as  an  affidavit  as  far  as  its  state- 
ments are  made  on  the  knowledge  of  the  defendant,  and  not 
merely  on  information  and  belief. 

Affidavits  and  other  evidence  to  disprove  the  statements 
of  fact,  contained  in  the  moving  papers  of  the  defendant, 
may  be  introduced  by  the  complainant ;  and  counter  evi- 
dence from  the  defendant  is  then  admissible  to  disprove  the 
complainant's  answering  allegations.  After  this,  it  becomes 
the  duty  of  the  judge  to  balance  the  documents  and  ascer- 
tain where  the  weight  of  them  is ; 3  and  he  will  decide  the 
motion  against  the  mover,  unless  his  papers  preponderate.4 
Service  on  the  opposite  party,  before  the  motion  is  heard, 
of  the  affidavits  upon  which  a  motion  to  dissolve  an  injunc- 
tion is  made  or  is  resisted,  seems  to  be  called  for  by  the 


1  Woodworth  t>.  Rogers,  3  Wood-  3  Woodworth  v.  Rogers,  3  Wood- 
bury  &  Minot,  143,  1847.  bury  &  Minot,  144,  1847. 

2  Union  Paper  Bag  Machine  Co.  4  Sparkman  v.  Higgins,  1  Blatch. 
t>.  Newell,  11  Blatch.  550,  1874.  207,  1849. 


530  INJUNCTIONS.  [CHAP.  XXI. 

same  reasons  which  call  for  similar  service  of  the  affidavits 
upon  which  motions  for  preliminary  injunctions  are  based 
or  are  withstood.1 

§  695.  A  motion  to  reinstate  a  dissolved  injunction  may  be 
made  at  any  time ;  but  it  will  not  be  granted  on  the  same 
state  of  the  case  as  that  which  existed  when  the  injunction 
was  dissolved.  So,  also,  a  reinstated  preliminary  injunc- 
tion may  be  again  dissolved  on  any  new  state  of  facts  which 
show  that  its  continuation  would  be  unjust.8  In  patent 
cases,  however,  it  will  seldom  occur  that  the  alternate  pro- 
cess of  issuing  and  dissolving  preliminary  injunctions  can 
be  carried  further  than  the  first  dissolution.  After  that,  the 
court  will  let  the  matter  rest  till  the  interlocutory  hearing, 
unless  a  case  of  great  clearness  and  pressing  necessity  is 
presented  for  further  preliminary  action. 

§  696.  While  an  injunction  is  in  force,  it  must  be  obeyed, 
even  though  it  ought  never  to  have  been  granted.3  But  an 
injunction  is  not  in  force  if  it  was  issued  against  a  defend- 
ant over  whom  the  court  had  no  jurisdiction.  No  court  has 
any  authority  to  issue  an  injunction  against  such  a  person. 
And  where  courts  act  without  authority,  their  orders  are 
nullities.  They  are  not  voidable,  but  simply  void.4  It 
follows  from  these  rules,  that  if  a  Federal  court  were  to 
issue  an  injunction  against  a  defendant  before  he  is  served 
with  a  subpoena  ad  respondendum  in  the  case,  that  injunction 
would  be  void  and  could  safely  be  disregerded ; 5  but  where 
an  injunction  is  granted  after  such  service,  and  upon  due 
notice  of  the  motion  therefor,  it  must  be  obeyed,  no  matter 
how  obviously  unjust  and  unwarrantable  its  granting  may 
have  been.  And  an  injunction  is  binding  upon  all  persons 


i  Section  662  of  this  book.  v.  Sturtevant,  5  Seldon  (N.  Y.),  263, 

"2  Tucker  «.  Carpenter,   1  Hemp-  1853;  Erie  Railway  Co.  v.  Ramsay, 

stead,  441, 1841.  45  New  York,  637,  1871. 

3  Moat  v.  Holbein,   2    Edwards'  4  Elliot  v.  Peirsol,  1  Peters,  340, 

Chancery  (N.  Y.),  188,  1834;  Sulli-  1828;  Wilcox  «.  Jackson,  13  Peters, 

van  «.  Judah,  4  Paige  (N.  Y.),  444,  511,  1839 

1834;  Richards  v.  West,  2  Green's  5  Sickles  v.  Borden,  4  Blatch.  14, 

Chancery  (N.  Y.),  456,  1836;  People  1857;  Section  661  of  this  book. 


CHAP.  XXI.]  INJUNCTIONS.  531 

who  have  any  legal  or  equitable  interest  with  the  defendant 
in  the  litigation,  and  who  are  informed  of  the  granting  of 
the  injunction  ;  even  though  they  were  not  defendants  in  the 
suit,  nor  served  with  an  injunction  writ 1  And  when  an 
injunction  is  dissolved  which  ought  not  to  have  been  granted, 
the  enjoined  party  is  without  redress  for  the  injury  or  incon- 
venience he  may  have  suffered,  unless  the  court  when  grant- 
ing the  injunction,  made  an  order  that  the  complainant 
should  pay  the  defendant  such  resulting  damages  as  he 
might  sustain  in  case  it  be  finally  decided  that  the  injunc- 
tion ought  not  to  have  been  granted  ;  or  required  the  com- 
plainant to  file  a  bond  to  secure  those  damages,  as  a  condi- 
tion precedent  to  the  issuing  of  the  injunction.2 

§  696<z.  An  appeal  is  demandable  to  the  Circuit  Court  of 
Appeals,  from  any  order  of  a  Circuit  Court  which  grants, 
continues,  refuses,  dissolves  or  refuses  to  dissolve  a  pre- 
liminary injunction  forbidding  the  infringement  of  a  patent, 
pendente  lite,  at  any  time  within  thirty  days  from  the  entry 
of  such  order ;  and  such  appeals  take  precedence  in  the 
appellate  court;  but  they  do  not  stay  the  other  proceedings 
in  the  case  in  the  court  below,  during  the  pendency  of  the 
appeal,  unless  that  court  so  orders.3  Nor  does  such  an 
appeal  give  the  appellant  a  right  to  a  supersedeas  of  the 
injunction  pending  the  appeal ;  and  the  suspension  of  the 
injunction  during  that  time,  may  be  granted  or  refused  at 
his  discretion,  by  the  judge  who  granted  the  injunction.4  The 
decision  of  an  appeal  from  an  order  granting  a  preliminary 
injunction,  primarily  depends  upon  the  question  of  the  prov- 
idence of  the  injunction  ;  and  that  question  may  or  may  not 
depend,  according  to  circumstances,  upon  the  ultimate 


1  Stahl  v.  Ertel,  62  Fed.  Rep.  922,  man,  16  Reporter,  164,  1883. 

1893.  8  28  Statutes  at  Large,  Ch.  96,  p. 

2  Lexington  &  Ohio  Railroad  Co.  666. 

v.  Applegate,  8  Dana  (Ken.)  289,  4  In  re  Haberman   Mfg.    Co.   147 

1839;  Sturgis  v.    Knapp,    33  Ver-  U.  8.  529,  1893. 
mont,  486,  1860;   McKay  v.   Jack- 


532  INJUNCTIONS.  [CHAP.  xxi. 

merits  of  the  case.1  In  deciding  the  question  of  the  provi- 
dence of  the  injunction,  the  adjudication  or  acquiescence 
upon  which  the  injunction  was  based  in  the  Circuit  Court, 
will  generally  have  the  same  strength  in  the  Circuit  Court 
of  Appeals,  that  it  ought  to  have  had  in  the  court  below  ; 2 
but  where  it  was  plainly  wrong  or  insufficient,  it  will  not  be 
followed.3  And  an  appeal  from  a  preliminary  injunction 
will  be  dismissed  without  adjudication,  in  the  Circuit  Court 
of  Appeals,  when  the  patent  has  expired  since  the  injunc- 
tion was  granted,  because  the  injunction  will  have  termi- 
nated at  the  same  time.4 

§  697.  A  permanent  injunction  follows  a  decision  in  favor 
of  the  complainant,  on  the  interlocutory  hearing  of  a  patent 
case,  unless  some  special  reason  exists  for  its  being  refused, 
or  being  postponed  till  after  the  master's  report,  or  being 
suspended  pending  an  appeal.5 

§  698.  A  refusal  of  a  permanent  injunction  will  generally 
follow  from  the  fact  that  the  patent  has  expired  at  the  time 
of  the  interlocutory  decree.6  If  there  is  an  exception  to 
this  rule,  it  is  only  where  the  defendant  may  be  enjoined 
from  using  or  selling,  after  the  expiration  of  the  patent, 
those  specimens  of  the  patented  thing  which  he  unlawfully 
made  before  that  expiration.7  But  Justice  MILLER  wisely 
decided  that  there  is  no  such  exception ;  because  such  an 
exception  would  practically  prolong  many  patents  beyond 

1  Blount  v.  Societe,  53  Fed.  Rep.  6  Jordan  ®.    Dobson,  2  Abbott's 
98,     1892;     Consolidated    Electric  U.  S.  Reports,   415,  1870;  Signal  v. 
Storage  Co.  «.  Accumulator  Co.  55  Harvey,  18  Blatch.  356,  1880. 
Fed.  Rep.  485,  1893.  7  Parker  v.   Sears,  1  Fisher,  102, 

2  American    Paper  Pail  Co.   v.      1850;     American    Diamond    Rock 
National  Folding  Box  Co.  51  Fed.       Boring  Co.  D.  Sheldon,  1  Fed.  Rep. 
Rep.  232,  1892.  870,  1880;  American  Diamond  Rock 

3  Curtis  0.   Overman  Wheel  Co.      Boring  Co.   ».   Marble  Co.  2  Fed. 
58  Fed.  Rep.  784,  1893.  Rep.  353,  355,  356,   1880;  Reay  v. 

4  Game-well    Fire    Alarm    Tele-      Raynor,    19  Fed.  Rep.   308,    1884; 
graph  Co.  v.  Municipal  Signal  Co.      Toledo  Reaper  Co  v.  Harvester  Co. 
61  Fed.  Rep.  208,  1894.  24  Fed.  Rep.  739,  1885;  New  York 

5  Potter  v.  Mack,  3  Fisher,  430,       Packing  Co.  v.  Magowan,  27  Fed. 
1868;  Rumford  Chemical  Works  ®.      Rep.  Ill,  1886. 

Hecker,  2  Bann.  &  Ard.  388,  1876. 


CHAP.  XXI. J  INJUNCTIONS.  533 

the  statutory  term  thereof ;  and  because  damages  are  a 
sufficient  remedy  for  such  unlawful  making.1  And  no  injunc- 
tion will  issue  to  prevent  preparation,  during  the  life  of  a 
patent,  for  making,  selling,  or  using  the  patented  matter 
after  the  patent  expires.2 

§  699.  A  refusal  of  a  permanent  injunction  will  also  occur 
where  the  complainant  is  shown  to  have  assigned,  prior  to 
the  interlocutory  decree,  all  his  interest  in  the  future  dura- 
tion of  the  patent  right  infringed  by  the  defendant.3  But 
no  such  refusal  will  be  based  on  the  fact  that  the  complain- 
ant is  not  employing  his  invention  in  competition  with  the 
defendant,4  or  upon  the  fact  that  the  defendant  can  accom- 
plish his  result  by  non-infringing  means.5 

§  700.  So,  also,  a  refusal  of  an  injunction  will  be  neces- 
sary, where  the  infringing  defendant  is  dead  at  the  time  of 
the  interlocutory  decree,  even  though  the  suit  may  have 
been  revived  against  his  legal  representative.6  In  such  a 
case  no  injunction  will  lie  against  the  dead  defendant, 
because  he  is  no  longer  within  the  jurisdiction  of  the  court ; 
and  none  will  lie  against  the  legal  representative,  because 
he  never  infringed  the  patent.  For  reasons  of  similar  legal 
import,  an  injunction  will  be  refused  where  the  defendant 
is  a  corporation  and  undergoes  legal  dissolution  before  the 
interlocutory  decree.  This  point  of  law  is  based  on  the 
doctrine  that  a  court  will  not  direct  a  writ  against  a  dead 
corporation  ;7  and  also  upon  the  rule  that  it  will  not  enjoin 
an  act  which,  from  the  nature  of  the  case,  cannot  be 
committed.8 


1  Westinghouse  v.  Carpenter,  43  Fed.  Rep.  71,  1891. 

Fed.  Rep.  894,  1888.  5  Du  Bois  v    Kirk,  158  U.  S.  66 

2  White  «.  Walbridge,  46   Fed.  1895. 

Rep.  526,  1891.  6  Draper  «.   Hudson,  1   Holmes, 

3  Wheeler     «.     McCormick,    11  208,  1873. 

Blatch.  345, 1873;   Boomer  «.  Pow-  7  Mumma  «.  Potomac  Co.  8  Pe- 

der  Press  Co.  13  Blatch.  107,  1875.  ters,  286,  1834. 

4  American  Bell  Telephone  Co.  v.  8  Potter  v.  Crowell,  8  Fisher,  115, 
Cushman  Telephone  Co.   36  Fed.  1866. 

Rep.  488,  1888;  Wirt  e.  Hicks,  46 


534  INJUNCTIONS.  [CHAP.  xxi. 

§  701.  But  the  fact  that  the  defendant  has  ceased  to 
infringe  the  patent,  and  says  that  he  will  not  infringe  it  in 
the  future,  is  no  reason  for  refusing  an  injunction  against 
him.1  Whatever  tort  a  man  has  once  committed,  he  is  likely 
to  commit  again,  unless  restrained  from  so  doing. 

§  702.  A  permanent  injunction  will  be  postponed  till  a 
final  decree,  when  such  a  postponement  is  necessary  to  save 
the  defendant  from  special  hardship,  and  is  not  injurious  to 
the  just  rights  of  the  complainant ;  2  or  where  an  immediate 
discontinuance  of  the  defendant's  use  of  the  patented  article 
is  contrary  to  public  policy.3  But  where  such  a  postpone- 
ment would  be  injurious  to  the  just  rights  of  the  complain- 
ant, it  will  not  be  granted  to  avert  from  the  defendant  the 
consequences  of  his  infringement,  even  where  those  conse- 
quences may  be  hard  to  bear.4  And  where  such  a  postpone- 
ment is  allowed,  the  defendant  should  be  required  to  give  a 
bond  for  the  security  of  the  complainant.5 

§  703.  A  permanent  injunction  may  be  suspended,  pend- 
ing an  appeal  from  the  interlocutory  decree  which  granted 
it,  at  the  discretion  of  the  judge  who  decided  the  case,  upon 
such  terms  as  to  bond  or  otherwise  as  he  may  consider 
proper  for  the  security  of  the  rights  of  the  opposite  party.6 
Such  a  bond  should  be  conditioned  upon  the  result  of  the 


1  Jenkins®.  Greenwald,  2  Fisher,  Co.  v.  North,  5  Blatch.  462,  1867; 

42,  1857;  Potter  v.  Crowell,  3  Fish-  Potter  v.  Mack,  3  Fisher,  428,  1868; 

er,   115,    1866;  Rumford  Chemical  Dorsey    Harvester    Rake    (Jo.    v. 

Works  v.  Vice,  14  Blatch.  180, 1877;  Marsh,  6  Fisher,  401,  1873;  West 

Bullock  Printing  Press  Co.  v.  Jones,  Publishing  Co. ».  Co-operative  Pub- 

3  Bann.  &  Ard.  195,  1878;  Facer  c.  lishing  Co.  53  Fed.  Rep.  269,  1893. 

Midvale  Steel- Work  Co.  38  Fed. Rep.  3  Ballard  «.   Pittsburg,  12    Fed. 

231,  1888;  Norton®.  Automatic  Can  Rep.  783,  1882.      . 

Co.  45  Fed.  Rep.  638, 1891;  Califor-  4  Brown  v.   Deere,  6  Fed.   Rep. 

nia  Electrical  Works  v.  Henzel,  48  487,  1880. 

Fed.  Rep.  377, 1891;  Henzel  ».  Cal-  5  American    Middlings    Purifier 

ifornia  Electrical  Works,  51   Fed.  Co.  v.  Christian,  3  Bann.  &  Ard.  53, 

Rep.  754,  1892;  Winchester  Arms  1877. 

Co.  0.  American  Buckle  Co.  54  Fed.  6  In  re  Haberman  Mfg.   Co.  147 

Rep.  711, 1893.  U.  8.  525,  1893;  Section  644a  of  this 

a  Barnard  v.   Gibson,  7  Howard,  book. 
657,  1849;  Yale  &  Greenleaf  Mfg. 


CHAP.  XXI.]  INJUNCTIONS.  535 

appeal,  and  should  secure  the  profits  and  damages  to  accrue 
after  the  interlocutory  decree,  and  before  the  decision  of  the 
Circuit  Court  of  Appeals  thereon,  and  also  those  which  may 
possibly  accrue  after  that  decision,  and  before  its  reviewal 
in  the  Supreme  Court,  in  the  event  that  the  case  should  go 
to  that  tribunal. 

And  a  permanent  injunction  may  be  suspended,  for  an 
extraordinary  cause,  pending  an  appeal  from  a  final  decree 
to  the  Circuit  Court  of  Appeals,  at  the  discretion  of  the 
judge  who  decided  the  case  and  allowed  the  appeal,  upon 
such  terms  as  will  secure  the  rights  of  the  complainant.1 
Those  rights  include  the  right  to  recover  the  profits  and 
damages  which  may  accrue  after  the  final  decree,  and 
before  the  end  of  the  suspension  of  the  injunction ;  and 
therefore  the  security  of  those  rights  will  require  a  bond  to 
cover  those  profits  and  damages,  in  addition  to  the  super- 
sedeas  bond  which  must  be  filed  to  cover  the  profits  and 
damages  which  accrued  prior  to  the  final  decree. 

Where  no  money  recovery  could  indemnify  the  complain- 
ant for  the  defendant's  unrestrained  doings  pending  an 
appeal,  it  will  be  reasonable  not  to  suspend  the  permanent 
injunction,  because  the  presumption  and  the  probability  are 
that  the  decree  of  the  circuit  court  is  right,  and  because  of 
two  evils  it  is  better  to  incur  the  risk  of  that  which  is  least 
to  be  expected. 

§  704.  A  permanent  injunction  may  be  dissolved  at  any 
time  within  six  months  after  the  expiration  of  the  term  of 
court  at  which  the  final  decree  in  the  case  was  entered ;  and 
such  a  dissolution  will  be  had  where  the  defendant,  by  means 
of  a  supplemental  bill  in  the  nature  of  a  bill  of  review,  or 
by  a  bill  of  review,  secures  a  cancellation  of  that  decree.2 
And  such  a  dissolution  must,  of  course,  occur  whenever  the 
decree  which  granted  the  injunction,  is  reversed  by  a 
higher  court. 


1  Munson  v.  New  York,  19  Fed.          2  Sections  647  to  653  of  this  book. 
Rep.  313,  1884;  Equity  Rule  93. 


536  INJUNCTIONS.  [CHAP.  XXI. 

§  705.  Injunctions  to  restrain  infringements  of  patents 
maybe  granted  independent  of  all  other  relief;1  and  an 
injunction  may  also  be  granted  to  restrain  a  complainant 
from  bringing  actions  against  persons  who  are  using  or  are 
selling  those  articles,  for  the  making  of  which  the  action  at 
bar  was  brought  against  the  defendant;2  or  to  restrain  the 
complainant  from  bringing  an  action  at  law  against  the 
defendant,  for  the  same  infringements  as  any  of  those  cov- 
ered by  the  action  in  equity.3  But  no  injunction  will  be 
issued  on  account  of  an  infringement  which  is  so  trivial  as 
to  be  below  the  dignity  of  the  court  ;4  nor  to  restrain  a  junior 
patentee  from  bringing  actions  on  his  patent,  while  that 
patent  is  still  free  from  an  adjudication  of  invalidity.5 

§  706.  The  duration  of  injunctions  in  patent  cases  depends 
upon  a  variety  of  circumstances.  Unless  such  a  writ  is 
expressly  made  to  apply  to  the  use  or  sale,  after  the  expira- 
tion of  the  patent,  of  specimens  of  the  patented  thing  which 
were  made  before  that  time,  such  injunction  cannot  continue 
after  that  expiration ;  and  surely  no  such  writ  will  be  made 
to  apply  to  such  use  or  sale  of  unpatented  parts  of  an 
infringing  combination.6  Indeed,  no  injunction  ought  in 
any  case  to  continue  after  the  expiration  of  the  patent.7 
Permanent  injunctions  are  sometimes  called  perpetual 
injunctions ;  but  in  patent  cases  that  would  be  a  misnomer, 
for  no  injunction  can  stand  longer  than  the  right  upon  which 
it  is  based,  and  patent  rights  are  never  perpetual. 

§  707.  And  the  duration  of  an  injunction  sometimes 
depends  upon  whether  it  was  issued  by  a  circuit  court  in 


1  American   Cotton    Tie  Supply  4  Lowell   Mfg.  Co.    v.    Hartford 
Co.  v.  McCready,  17  Blatch.  291,  Crapet   Co.   2   Fisher,    472,    1864; 
1879.  Wickwire  «.  Wire  Fabric  Co.  41 

2  Birdsall  t>.  Mfg.  Co.  I  Hughes,  Fed.  Rep.  36,  1889. 

64,  1877;  Allis  v.  Stowell,  16  Fed.  5  Asbestos  Felting  Co.  ».  Sala- 

Rep.  788,  1883;  Ide  v.  Engine  Co.  mander  Felting  Co.  13  Blatch.  453, 

31  Fed.  Rep.  901,  1887;   National  1876. 

Cash  Register  Co.®.  Boston  Cash  6  Johnson  v.  Brooklyn  Co.  37  Fed. 

Recorder  Co.  41  Fed.  Rep.  51,  1889.  Rep.  147,  1888. 

3  Morss  v.  Knapp,  35  Fed.  Rep.  7  Westinghouse  v.  Carpenter,  43 
218,  1888.  Fed.  Rep.  894,  1888. 


CHAP.  XXI.]  INJUNCTIONS.  537 

term  time,  or  by  one  of  the  judges  in  vacation.  The  stat- 
utes draw  a  plain  distinction  between  a  circuit  court  and  a 
judge  thereof.  When  a  circuit  court  is  in  session  during 
one  of  its  terms,  its  jurisdiction  is  the  same  whether  it  is 
held  by  the  circuit  justice  allotted  to  the  circuit,  or  by  a 
circuit  judge  of  the  circuit,  or  by  the  district  judge  of  the 
district,  or  by  any  two  or  more  of  them  sitting  together,  or 
by  a  circuit  judge  of  some  other  circuit,  or  by  the  district 
judge  of  some  other  district,  holding  the  court  in  a  special 
emergency.1  As  to  the  duration  of  injunctions  issued  by 
circuit  courts  so  held,  the  rules  stated  in  the  last  section 
uniformly  apply.  But  it  often  happens  that  injunctions 
become  necessary  during  the  time  which  elapses  after  the 
adjournment  of  one  term  of  the  circuit  court  in  a  particular 
district,  and  before  the  beginning  of  the  next  term  of  the 
same  court.  In  such  a  case,  an  injunction  may  be  granted 
by  the  circuit  justice  allotted  to  that  circuit,  or  by  a  circuit 
judge  of  that  circuit,  or  by  the  district  judge  of  that  district, 
under  the  following  circumstances  respectively,  and  with  the 
respective  durations  about  to  be  mentioned.  The  circuit 
justice  or  a  circuit  judge  may  sit  at  any  time  at  any  place 
within  his  circuit  to  grant  an  injunction  in  any  proper  case 
pending  in  the  circuit  court  of  any  district  in  that  circuit ; 
and  the  circuit  justice  may  so  sit,  at  any  other  place  in  the 
United  States,  whenever  the  motion  cannot  be  heard  by  a 
circuit  judge  of  the  circuit,  or  by  the  district  judge  of  the 
district,  whether  the  inability  of  the  local  judges  arose  from 
absence  from  their  respective  jurisdictions,  or  from  any 
other  cause;2  and  an  injunction,  when  so  granted,  will  have 
the  same  duration  as  if  granted  by  the  circuit  court  for  the 
district.3  The  district  judge  of  any  district  may  sit  at  any 
time,  at  any  place  within  his  district,  to  grant  an  injunction 


1  Revised  Statutes,  Sections  609,  *  Revised  Statutes,  Section  719; 

617,  618,  591,  592,  593,  594,  595,  596,  Searls  v.  Railroad  Co.  2  Woods, 

and  611;  Goodyear  Dental  Vulcanite  622,  1873. 

Co.  v.  Folsom,  5  Bann.  &  Ard.  591,  8  Gray  ».  Railroad  Co.  1  Wool- 

1880.  worth,  68, 1864. 


538  INJUNCTIONS.  [CHAP.  XXI. 

in  any  proper  case  pending  in  the  circuit  court  of  that  dis- 
trict, provided  the  mover  did  not  have  a  reasonable  time  to 
apply  to  the  circuit  court  for  the  writ ;  but  such  an  injunc- 
tion will  not  continue  in  force  after  the  beginning  of  the 
next  term  of  the  circuit  court  unless  the  court,  when  it  sits, 
makes  an  order  to  that  effect.1  If  the  next  term  of  the  cir- 
cuit court  is  held  by  some  other  judge  than  the  district 
judge  who  granted  the  injunction,  the  approval  of  the  injunc- 
tion, by  the  judge  so  holding  court,  will  therefore  be  neces- 
sary to  its  continued  vitality  ;  but  if  the  next  term  happens 
to  be  held  by  the  district  judge  who  issued  the  writ,  his 
order  continuing  it  in  force  will  be  equally  efficacious.  In 
either  event,  orders  to  continue  injunctions  issued  by  dis- 
trict judges  in  vacation,  have  become  so  much  a  matter  of 
form,  that  they  are  seldom  actually  asked  for  or  entered. 
But  the  formality  ought  to  be  revived  and  followed,  because 
in  its  absence,  no  attachment  can  lie  against  one  who  disre- 
gards such  an  injunction  after  the  beginning  of  the  ensuing 
term  of  the  circuit  court.2 

§  708.  An  attachment  will  issue  to  bring  an  enjoined 
defendant  before  the  court  for  punishment,3  whenever  the 
complainant  institutes  proper  proceedings  therefor,  and 
proves  that  the  defendant  was  promptly4  served  with  a  writ 
of  injunction,  and  that  the  writ  contained  a  concise  descrip- 
tion of  the  particular  thing,  all  specimens  of  which  it  forbade 
the  defendant  to  make,  use,  or  sell,5  and  that  the  defendant 
did  make,  or  use,  or  sell,  or  did  cause  to  be  made,  used,  or 
sold  a  specimen  of  that  thing,  or  of  a  thing  clearly  the  same, 
after  having  been  served  with  that  writ.6  And  an  attach- 

1  Revised  Statutes,  Section  719.         ing  Co.  c.  Gillett,  24  Fed.  Rep.  696, 

2  Parker  v.  The  Judges,  12  Whea-      1885. 

ton,  564,  1827;  Gray  v.  Railroad  Co.  6  Birdsall  v.  Mfg.  Co.  2  Bann.  & 

1  Woolworth,  63,  1864.  Ard.  519,  1877;  Allis  t>.  Stowell,  19 

3  Bate  Refrigerating  Co.  v.  Gillett,  Off.  Gaz.  727,  1881;  Atlantic  Giant 
30  Fed.  Rep.  684,  1887.  Powder    Co.    v.    Dittmar    Powder 

4  McCormick  v.  Jerome,  3  Blatch.  Mfg.   Co.   9  Fed.  Rep.   316,    1881; 
486,  1856.  Mundy  v.   Mfg.   Co.  34  Fed.  Rep. 

5  Whipple     v.     Hutchinson,     4  541, 1888. 
Blatch.  191,  1875;  Bate  Refrigerat- 


CHAP.  XXI.]  INJUNCTIONS.  539 

ment  will  likewise  issue  for  a  similar  infringement,  against 
any  person  who  had  an  interest  in  the  litigation  with  the 
defendant,  and  who  was  informed  of  the  injunction,  even 
though  not  a  nominal  defendant,  nor  served  with  an  injunc- 
tion writ.1 

But  an  attachment  will  not  issue  against  a  stranger  to  the 
suit,  merely  because  he  has  succeeded  to  the  business  in 
the  conduct  of  which  the  defendant  incidentally  infringed 
the  complainant's  patent,  even  where  that  successor  has 
likewise  infringed.2  Where  the  defendant  is  a  corporation, 
and  where  the  officer  of  that  corporation  upon  whom  the 
writ  was  served,  was  privy  to  its  violation,  an  attachment 
will  issue  against  him  in  person  ;3  and  indeed  an  injunction 
duly  served  on  a  corporation  is  binding  on  all  persons 
acting  for  that  corporation,  and  who  have  notice  of  tne 
writ  and  of  its  contents,  whether  they  were  actually  served 
or  not.4 

Where  the  thing  proved  to  have  been  done  by  the  enjoined 
defendant,  consists  in  sending  to  some  foreign  country,  and 
selling  there,  articles  which  were  made  in  the  United  States, 
in  infringement  of  the  patent,  before  the  injunction  was 
granted,  an  attachment  will  not  issue  ;  because  such  a  trans- 
action is  not  a  violation  of  an  injunction  against  the  infringe- 
ment of  a  patent.5  And  an  attachment  will  not  issue  where 
the  character  of  the  defendant's  doings,  after  the  injunction, 
is  doubtful.6  Where  the  thing  proved  to  have  been  made, 
used,  or  sold  by  the  enjoined  defendant,  differs  from  the 
article  described  in  the  writ  of  injunction,  a  question  of 
infringement  may  arise,  which  may  require  to  be  brought 
before  the  court  on  a  motion  for  another  and  a  specific  writ 


1  Stahl  v.  Ertel,  62  Fed.  Rep.  922,  4  Phillips  ».   Detroit,  3  Bann.  & 
1893.  Ard.  150,  1877. 

2  Bate  Refrigerating  Co.  v.  Gillett,  6  Gould  «.  Sessions,  67  Fed.  Rep 
30  Fed.  Rep.  684,  1887.  163,  1895. 

3  Wetherill  v.  Zinc  Co.  1  Bann.  &  8  Accumulator  Co.  «.  Storage  Co. 
Ard.  150,  1874.  53  Fed.  Rep.  798,  1892. 


540  INJUNCTIONS.  [CHAP.  XXI. 

of  injunction,  rather  than  on  a  motion  for  an  attachment.1 
If  that  question  is  a  doubtful  one,  an  attachment,  if  moved 
for,  will  not  issue  ; 2  because  doubtful  questions  will  not  be 
decided  on  summary  proceedings  to  commit  persons  for 
contempt  of  court.  But  not  every  question  is  doubtful 
which  is  difficult,  or  which  is  complex,  or  about  which  the 
evidence  is  conflicting.  It  is  therefore  the  duty  of  the 
court,  on  a  hearing  of  a  motion  for  an  attachment,  to  exam- 
ine what  the  defandant  is  proved  to  have  done,  and  to  issue 
an  attachment  if  his  doings  satisfactorily  appear  in  the  eye 
of  the  law  to  constitute  infringement  of  a  claim  covered  by 
the  writ  of  injunction.3  A  motion  for  an  attachment  cannot 
be  anticipated  and  outflanked  by  a  motion  to  expressly 
limit  the  injunction,  so  as  to  exclude  the  doings  of  the 
defendant.4  And  where  a  motion  for  an  attachment  is 
denied,  on  the  ground  of  infringement  being  too  doubtful  to 
be  decided  on  such  a  motion,  that  denial  does  not  prevent 
a  decision  finding  infringement,  in  a  new  suit  between  the 
same  parties  on  the  same  facts.5 

A  motion  for  an  attachment  for  contempt  of  court  for 
violating  an  injunction  is  an  independent  criminal  case, 


1  Gold  &  Stock  Telegraph  Co.  v.  31  Fed.  Rep.  292,  1887;  Howard  •». 
Pearce,   19   Fed.    Rep.  419,   1884:  Mast,  33  Fed.  Rep.  867, 1888;  Mun- 
Truax  v.  Detweiler,  46  Fed.  Rep.  dy  ®.  kMfg.  Co.  34  Fed.  Rep.  541, 
118,  1891;  Bonsack  Machine  Co.  v.  1888;     Pennsylvania    Drill    Co.    v. 
Cigarette  Co.   64   Fed.  Rep.   858,  Simpson,   39  Fed.  Rep.  284,  1889; 
1894.  Enterprise  Mfg.  Co.  ».  Sargent,  48 

2  California  Paving  Co.  v.  Molitor,  Fed.  Rep.  453,  1891;  Mack  v.  Levy, 
113  U.  S.  617,  1884;  Liddle  «.  Cory,  49  Fed.  Rep.  857,  1892. 

7  Blatch.  1,  1866;  Welling  «.  Trim-  3  Wetherill  «.  Zinc  Co.  1  Bann.  & 

ming  Co  2  Bann.  &  Ard.  1,  1875;  Ard.  105,  1874;  Schillinger  v.  Gun- 

Buerk  v.  Imhaeuser,  2  Bann.  &  Ard.  ther,  2  Bann    &    Ard.    545,   1877; 

465,  1876;  Onderdonk  v.  Fanning,  5  Morss  v.  Knapp,  37  Fed.  Rep.  353, 

Bann.  &  Ard.  431, 1880;  Bate  Re-  1889. 

frigerating  Co.  v.  Eastman,  11  Fed.  4  Edison   Electric    Light    Co.  v. 

Rep.  902,   1881;  Higby  v.   Rubber  Westinghouse  Electric  Co.  54  Fed. 

Co.  18  Fed.  Rep.  601,  1883;  Smith  Rep.  504,  1893. 

v.  Halkyard,  19  Fed.  Rep.  602, 1884;  5  Mack  «.  Levy,  59  Fed.  Rep.  468, 

Wirt  B.   Brown,  30  Fed.  Rep.  187,  1894. 

1887;  Temple  Pump  Co.  v.  Mfg.  Co. 


CHAP.   XXI.]  INJUNCTIONS.  541 

which  can  be  taken  to  the  Circuit  Court  of  Appeals  for 
review  on  a  writ  of  error,  while  the  action  in  equity  out  of 
which  it  arose,  is  still  pending  and  progressing  in  the  Circuit 
Court.1 

§  709.  It  is  no  defence  to  a  motion  for  an  attachment  to 
show  that  the  decision  in  pursuance  of  which  the  injunction 
was  granted  was  wrong ; 2  or  that  new  evidence  has  since 
been  discovered  which,  if  it  had  been  known  at  the  hearing, 
would  have  caused  a  contrary  decision  ;  3  or  that  the  defend- 
ant was  advised  by  counsel  that  his  doings  did  not  violate 
the  injunction  ; 4  or  that  what  the  defendant  did  was  done 
as  the  employee  of  another  ;  5  or  that  the  writ  of  injunction 
was  for  a  while  suspended  in  its  operation,  by  the  consent 
of  the  complainant  without  any  order  of  court ; 6  or  that 
the  writ  of  injunction  was  inadvertently  made  broader  than 
the  decision  of  the  court  would  warrant.7  In  such  a  case 
as  the  last  of  these,  the  defendant  may  apply  to  the  court 
to  correct  the  writ,  but  he  nmst  not  disobey  it  while  it 
remains  unchanged.  But  where  an  injunction  was  based 
on  a  consent  decree,  which  decree  was  entered  in  pursuance 
of  a  compromise  of  the  parties,  an  attachment  will  not 
issue  for  a  disregard  of  that  injunction,  if  that  compro- 
mise has  been  set  aside  by  a  court  of  competent  jurisdiction, 
or  if  such  a  court  has  enjoined  the  complainant  from  enforc- 
ing the  contract  of  compromise.8 

§  710.  The  penalty  for  a  violation  of  an  injunction  depends 
upon  the  circumstances  of  the  particular  case  at  bar.  Where 

1  Sessions  v.  Gould,  63  Fed.  Rep.  1857;  Goodyear  v.  Mullee,  5  Blatch. 
1002,  1894;    Gould  v.   Sessions,  67  437,  1867;  Potter  t>.  Muller,  1  Bond. 
Fed.  Rep.  163,  1895.  601,   1865;  Iowa  Barb  Steel    Wire 

2  Woodworth  v.  Rogers,  3  Wood-  Co.  v.   Barbed  Wire  Co.  80  Fed. 
bury  &  Minot,  135,  1847;  Liddle  v.  Rep.  123,  1887. 

Cory,  7  Blatch.  1,  1865.  8  Pentlarge  v.   Beeston,  1   Fed. 

s  Whipple      «.      Hutchinson,     4  Rep.  862,  1880. 

Blatch.   190,   1858;  Phillips  v.  De-  7  Sickle?  v.  Borden,  4  Blatch.  15, 

troit,  3  Bann.  &  Ard.  150,  1877.  1857. 

4  Hamilton  «.  Simons,  5  Bissell,  8  Pentlarge  v.   Beeston,   1  Fed. 

77,  1869.  Rep.  862,  1880. 

6  Sickles  v.  Borden,  4  Blatch.  15 


54$ 


INJUNCTIONS. 


[CHAP.  xxi. 


it  appears  that  the  defendant  had  no  intention  to  disobey 
the  writ,  the  penalty  may  be  confined  to  an  enforced  pay- 
ment of  the  costs  of  the  motion  for  an  attachment.1  Where 
the  defendant  had  no  intention  to  disobey  the  writ,  but 
imprudently  did  so,  the  penalty  may  include  the  costs  and 
a  small  fine.2  Where  the  disobedience  is  less  excusable, 
the  defendant  may  be  compelled  to  pay  all  the  expenses  and 
counsel  fees  incurred  by  the  complainant  in  relation  to 
the  motion.3  And  where  disobedience  of  an  injunction  is 
excuseless  and  defiant,  the  penalty  may  be  a  reasonable  fine 
and  a  reasonable  imprisonment. 


1  Carsteadt  v.  Corset  Co. 13  Blatch. 
371,  1876;  Strowbridge  «.  Lindsay, 
6  Fed.  Rep.  510,  1881;  Macbeth  v. 
Gillinder,  54  Fed.  Rep.  172,  1891; 
Macbeth  v  Braddock  Glass  Co.  54 
Fed.  Rep.  173,  1890;  Braddock 
Glass  Co.  «.  Macbeth,  64  Fed.  Rep. 
120,  1894. 


2  Norton  v.  Automatic  Can  Co.  59 
Fed.  Rep.  137,  1893. 

3  Doubleday®.  Sherman,  4  Fisher, 
253,  1870;  Schillinger  «.  Gunther,  2 
Bann.   &  Ard.    545,  1877;  Stahl  0. 
Ertel,  62  Fed.  Rep.  922,  1893. 


CHAP.  XXI.]  INJUNCTIONS.  529 

interests  of  clients,  than  the  repetition  of  old  and  well- 
understood  arguments. 

§  694.  Motions  to  dissolve  an  injunction  on  account  of 
newly  discovered  facts,  require  the  mover  to  assume  the 
burden  of  establishing  those  facts,  because  when  an  injunc- 
tion is  once  granted,  it  is  presumed  to  have  been  granted 
rightfully,  until  the  contrary  is  made  to  appear.1  The  con- 
trary can  seldom  or  never  be  made  to  appear  in  a  patent 
case,  by  means  of  the  defendant's  answer ;  because  the 
answer,  as  far  as  it  refers  to  the  validity  of  the  patent  and  of 
the  complainant's  title  thereto,  is  generally  made  on  informa- 
tion and  belief  only,  and  as  far  as  it  refers  to  the  defend- 
ant's infringement,  it  amounts  only  to  a  general  denial. 
Where  an  answer  is  on  file  at  the  time  the  motion  to  dissolve 
is  heard,  the  injunction  will  not  be  dissolved  on  the  strength 
of  any  facts  which  are  not  set  up  in  the  answer ; 2  but 
whether  an  answer  is  on  file  at  that  time  or  not,  the  facts 
upon  which  the  motion  is  based  must  be  shown  by  affida- 
vits or  by  other  admissible  evidence  ;  though,  if  an  answer 
is  on  file,  it  may  be  used  as  an  affidavit  as  far  as  its  state- 
ments are  made  on  the  knowledge  of  the  defendant,  and  not 
merely  on  information  and  belief. 

Affidavits  and  other  evidence  to  disprove  the  statements 
of  fact,  contained  in  the  moving  papers  of  the  defendant, 
may  be  introduced  by  the  complainant ;  and  counter  evi- 
dence from  the  defendant  is  then  admissible  to  disprove  the 
complainant's  answering  allegations.  After  this,  it  becomes 
the  duty  of  the  judge  to  balance  the  documents  and  ascer- 
tain where  the  weight  of  them  is ; 3  and  he  will  decide  the 
motion  against  the  mover,  unless  his  papers  preponderate.4 
Service  on  the  opposite  party,  before  the  motion  is  heard, 
of  the  affidavits  upon  which  a  motion  to  dissolve  an  injunc- 
tion is  made  or  is  resisted,  seems  to  be  called  for  by  the 


1  Woodworth  v.  Rogers,  3  Wood-  8  Woodworth  v.  Rogers,  3  Wood- 
bury  &  Minot,  143,  1847.  bury  &  Minot,  144,  1847. 

2  Union  Paper  Bag  Machine  Co.  4  Sparkman  v.  Higgins,  1  Blatch. 
v.  Newell,  11  Blatch.  550,  1874.  207,  1849. 


530  INJUNCTIONS.  [CHAP.  xxi. 

same  reasons  which  call  for  similar  service  of  the  affidavits 
upon  which  motions  for  preliminary  injunctions  are  based 
or  are  withstood.1 

§  695.  A  motion  to  reinstate  a  dissolved  injunction  may  be 
made  at  any  time ;  but  it  will  not  be  granted  on  the  same 
state  of  the  case  as  that  which  existed  when  the  injunction 
was  dissolved.  So,  also,  a  reinstated  preliminary  injunc- 
tion may  be  again  dissolved  on  any  new  state  of  facts  which 
show  that  its  continuation  would  be  unjust.2  In  patent 
cases,  however,  it  will  seldom  occur  that  the  alternate  pro- 
cess of  issuing  and  dissolving  preliminary  injunctions  can 
be  carried  further  than  the  first  dissolution.  After  that,  the 
court  will  let  the  matter  rest  till  the  interlocutory  hearing, 
unless  a  case  of  great  clearness  and  pressing  necessity  is 
presented  for  further  preliminary  action. 

§  696.  While  an  injunction  is  in  force,  it  must  be  obeyed, 
even  though  it  ought  never  to  have  been  granted.3  But  an 
injunction  is  not  in  force  if  it  was  issued  against  a  defend- 
ant over  whom  the  court  had  no  jurisdiction.  No  court  has 
any  authority  to  issue  an  injunction  against  such  a  person. 
And  where  courts  act  without  authority,  their  orders  are 
nullities.  They  are  not  voidable,  but  simply  void.4  It 
follows  from  these  rules,  that  if  a  Federal  court  were  to 
issue  an  injunction  against  a  defendant  before  he  is  served 
with  a  subpoena  ad  respondendum  in  the  case,  that  injunction 
would  be  void  and  could  safely  be  disregerded ; 5  but  where 
an  injunction  is  granted  after  such  service,  and  upon  due 
notice  of  the  motion  therefor,  it  must  be  obeyed,  no  matter 
how  obviously  unjust  and  unwarrantable  its  granting  may 
have  been.  And  an  injunction  is  binding  upon  all  persons 


1  Section  662  of  this  book.  •».  Sturtevant,  5  Seldon  (N.  Y.),  263, 

13  Tucker  «.  Carpenter,   1  Hemp-  1853;  Erie  Railway  Co.  ».  Ramsay, 

stead,  441, 1841.  45  New  York,  637,  1871. 

3  Moat  v.  Holbein,   2    Edwards'  4  Elliot  v.  Peirsol,  1  Peters,  340, 

Chancery  (N.  Y.),  188,  1834;  Sulli-  1828;  Wilcoxa.  Jackson,  13  Peters, 

van  v.  Judah,  4  Paige  (N.  Y.),  444,  511,  1839 

1834;  Richards  v.  West,  2  Green's  3  Sickles  «.  Borden,  4  Blatch.  14, 

€hancery  (N.  Y.),  456,  1836;  People  1857;  Section  661  of  this  book. 


CHAPTEE  XXII. 


PROFITS. 


711.  The  infringer's  profits  recov- 
erable in  equity. 

712.  In  cases  of  joint  infringement. 

713.  In  cases  of  infringement  partly 
unprofitable. 

714.  What  spaces  of  time  an  ac- 
count of  profits  may  cover. 

715.  The  generic  rule  for  ascertain- 
ing infringer's  profits. 

716.  Complainant's     damages    no 
criterion  of  defendant's  prof- 
its. 

717.  Defendant's  profits  in  cases  of 
unlawfully  making  and  selling 
articles  covered  by  the  com- 
plainant's patent. 

718.  Method  of   ascertaining  cost 
of  making  and  selling  infring- 
ing articles. 

719.  Burden  of   proof  when  it  is 
necessary  to  separate  profits 
due    to    patented     features, 
from  profits  due  to  other  fea- 
tures of  an  infringing  article. 

720.  Method  of  making  the  sepa- 
ration where  defendant-  made 
and  sold  the  patented  inven- 
tion   separately,    as    well  as 
in     connection    with     other 
things. 

721.  Method  where  defendant  pays 
royalty  for  right  to  make  and 
sell  the  features  not  covered 
by  the  patent  in  suit. 

722.  Cases  where  no  separation  is  . 
required  or  allowed. 

723.  Method  of  making  the  separa- 


tion by  the  criterion  of  com- 
parative cost. 

723a.  Defendant's  profits  in  design 
cases. 

724.  Defendant's  profits  in  cases  of 
unlawfully     selling     articles 
partly  or  wholly  covered  by 
complainant's  patent. 

725.  Defendant's  profits  in  cases  of 
unlawful    using    of    patented 
processes  or  things. 

729.  Affirmative  gain. 

730.  Saving  from  loss. 

731.  Affirmative  gain  and  saving 
from  loss. 

732.  Standard  of  comparison  need 
not  have  been  used    by   the 
infringer. 

734.  Method     of      selecting     the 
proper  standard  of  compari- 
son. 

735.  The  rule  as  to  using  has  only  a 
limited  application  to  cases  of 
infringement    by  making    or 
by  selling. 

736.  Interest  on  infringer's  profits. 

739.  Proceedings  before    masters. 

740.  Evidence  before  masters. 

741.  Objections  to  evidence  before 
masters. 

742.  Questions  of  the  extent  of  the 
defendant's  infringement. 

743.  Questions  relevant  to  different 
sorts  of   defendant's  alleged 
infringement. 

744.  Master's  Reports. 

745.  Exceptions  to  master's  report. 

543 


544 


PROFITS. 


[CHAP.  XXII. 


746.  Defendants'     exceptions     to 
master's  reports. 

747.  Defendants'  affirmative  excep- 
tions to  master's  reports. 

748.  Defendants'    negative    excep- 


tions to  master's  reports. 

749.  Complainants'   exceptions   to 
master's  reports. 

750.  Outline  of    practice  relevant 
to  master's  findings. 


§  711.  THE  profits  which  are  recoverable  in  equity  for 
the  infringement  of  a  patent,  are  those  which  the  defendant 
made  from  that  infringement.1  They  are  the  profits  which 
he  actually  made;  not  those  which  with  worse,2  or  better,3 
management  he  would  or  might  have  made. 

Where  a  particular  infringer  realized  no  profit  from  his 
infringement,  none  can  be  recovered  from  him  ;  but  where 
he  did  make  such  a  profit,  it  can  be  recovered,  whether  the 
general  business,  of  which  the  infringement  formed  a  part, 
was  profitable  to  him  or  not,4  and  whether  or  not  the  com- 
plainant was  employing,  at  the  time,  the  invention  which  was 
covered  by  the  patent  infringed.5 

The  recoverable  profits  are  those  which  resulted  directly, 
and  do  not  include  any  which  resulted  indirectly,  from  the 
infringement.6  The  case  of  Piper  v.  Brown  is  cited  as  an 
example  of  this  distinction.  The  difference  between  the 
amount  of  money  for  which  the  defendants  sold  their  pre- 
served fish,  and  the  aggregate  cost  of  that  fish  and  of  pre- 
serving it  by  the  patented  apparatus,  was  there  held  to  be 
direct  profit.  But  it  appeared  that  the  defendants  were 
also  dealers  in  fresh  fish,  and  that  they  sold  a  large  amount 
of  such  fish  at  higher  prices  than  they  could  have  done,  had 
they  not  reduced  the  supply  in  the  market  by  means  of 


1  Rubber  Co.  v.  Goodyear,  9  Wal- 
lace, 801,  1869;  Tilghman  v.  Proc- 
tor, 125  U.  S.  144,  1888. 

2  Lawther  v.   Hamilton,  64  Fed. 
Rep.  224,  1892. 

3  Livingston  v.   Woodworth,    15 
Howard,  546,  1853;  Dean  v.  Mason, 
20  Howard,    203,   1857;   Keystone 
Mfg.  Co.  v.  Adams,  151  U.  S.  147, 
1894;  Coupe  v.  Royer,  155  U.  S.  565, 
1895. 


4  Elizabeth  ®.   Pavement  Co.  97 
U.  S.  138,  1877;  Tilghman  v.  Proc- 
tor, 125  U.  S.  146,  1888. 

5  Crosby  Steam  Gauge  &  Valve 
Co.  v.  Safety  Valve  Co.  141  U.  S. 
452, 1891. 

6  Piper  v.  Brown,  1  Holmes,  198, 
1873;  Heaton  Button  Fastener  Co. 
v.   Macdonald,   57  Fed.  Rep.  649, 
1893. 


CHAPTEE  XXII. 


PROFITS. 


711.  The  infringer's  profits  recov- 
erable in  equity. 

712.  In  cases  of  joint  infringement. 

713.  In  cases  of  infringement  partly 
unprofitable. 

714.  What  spaces  of  time  an  ac- 
count of  profits  may  cover. 

715.  The  generic  rule  for  ascertain- 
ing infringer's  profits. 

716.  Complainant's     damages    no 
criterion  of  defendant's  prof- 
its. 

717.  Defendant's  profits  in  cases  of 
unlawfully  making  and  selling 
articles  covered  by  the  com- 
plainant's patent. 

718.  Method  of   ascertaining  cost 
of  making  and  selling  infring- 
ing articles. 

719.  Burden  of   proof  when  it  is 
necessary  to  separate  profits 
due    to    patented     features, 
from  profits  due  to  other  fea- 
tures of  an  infringing  article. 

720.  Method  of  making  the  sepa- 
ration where  defendant  made 
and  sold  the  patented  inven- 
tion   separately,    as    well  as 
in     connection    with     other 
things. 

721.  Method  where  defendant  pays 
royalty  for  right  to  make  and 
sell  the  features  not  covered 
by  the  patent  in  suit. 

722.  Cases  where  no  separation  is 
required  or  allowed. 

728.   Method  of  making  the  separa- 


tion by  the  criterion  of  com- 
parative cost. 

723a.  Defendant's  profits  in  design 
cases. 

724.  Defendant's  profits  in  cases  of 
unlawfully     selling  '  articles 
partly  or  wholly  covered  by 
complainant's  patent. 

725.  Defendant's  profits  in  cases  of 
unlawful    using    of    patented 
processes  or  things. 

729.  Affirmative  gain. 

730.  Saving  from  loss. 

731.  Affirmative  gain  and  saving 
from  loss. 

732.  Standard  of  comparison  need 
not  have  been  used    by  the 
infringer. 

734.  Method     of      selecting     the 
proper  standard  of  compari- 
son. 

735.  The  rule  as  to  using  has  only  a 
limited  application  to  cases  of 
infringement    by  making    or 
by  selling. 

736.  Interest  on  infringer's  profits. 

739.  Proceedings  before    masters. 

740.  Evidence  before  masters. 

741.  Objections  to  evidence  before 
masters. 

742.  Questions  of  the  extent  of  the 
defendant's  infringement. 

743.  Questions  relevant  to  different 
sorts  of   defendant's  alleged 
infringement. 

744.  Master's  Reports. 

745.  Exceptions  to  master's  report. 

543 


544 


PBOFITS. 


[CHAP.  XXII. 


746.  Defendants'      exceptions     to 
master's  reports. 

747.  Defendants'  affirmative  excep- 
tions to  master's  reports. 

748.  Defendants'    negative    excep- 


tions to  master's  reports. 

749.  Complainants'   exceptions    to 
master's  reports. 

750.  Outline  of   practice  relevant 
to  master's  findings. 


§  711.  THE  profits  which  are  recoverable  in  equity  for 
the  infringement  of  a  patent,  are  those  which  the  defendant 
made  from  that  infringement.1  They  are  the  profits  which 
he  actually  made ;  not  those  which  with  worse,2  or  better,3 
management  he  would  or  might  have  made. 

Where  a  particular  infringer  realized  no  profit  from  his 
infringement,  none  can  be  recovered  from  him  ;  but  where 
he  did  make  such  a  profit,  it  can  be  recovered,  whether  the 
general  business,  of  which  the  infringement  formed  a  part, 
was  profitable  to  him  or  not,4  and  whether  or  not  the  com- 
plainant was  employing,  at  the  time,  the  invention  which  was 
covered  by  the  patent  infringed.5 

The  recoverable  profits  are  those  which  resulted  directly, 
and  do  not  include  any  which  resulted  indirectly,  from  the 
infringement.6  The  case  of  Piper  v.  Brown  is  cited  as  an 
example  of  this  distinction.  The  difference  between  the 
amount  of  money  for  which  the  defendants  sold  their  pre- 
served fish,  and  the  aggregate  cost  of  that  fish  and  of  pre- 
serving it  by  the  patented  apparatus,  was  there  held- to  be 
direct  profit.  But  it  appeared  that  the  defendants  were 
also  dealers  in  fresh  fish,  and  that  they  sold  a  large  amount 
of  such  fish  at  higher  prices  than  they  could  have  done,  had 
they  not  reduced  the  supply  in  the  market  by  means  of 


1  Rubber  Co.  t>.  Goodyear,  9  Wal- 
lace, 801,  1869;  Tilghman  v.  Proc- 
tor, 125  U.  S.  144,  1888. 

2  Lawther  «.   Hamilton,  64  Fed. 
Rep.  224,  1892. 

3  Livingston  v.   Woodworth,    15 
Howard,  546,  1853;  Dean  «.  Mason, 
20  Howard,    203,   1857;   Keystone 
Mfg.  Co.  v.  Adams,  151  U.  8.  147, 
1894;  Coupe  v.  Royer,  155  U.  S.  565, 
1895. 


4  Elizabeth  v.   Pavement  Co.  97 
U.  S.  138,  1877;  Tilghman  v.  Proc- 
tor, 125  U.  S.  146.  1888. 

5  Crosby  Steam  Gauge  &  Valve 
Co.  v.  Safety  Valve  Co.  141  U.  S. 
452,  1891. 

6  Piper  v.  Brown,  1  Holmes,  198, 
1873;  Heaton  Button  Fastener  Co. 
v.   Macdonald,   57  Fed.   Rep.  649, 
1893. 


CHAP.  XXII.]  PEOFIT8.  545 

preserving  fish  by  the  patented  apparatus.  The  increase  in 
the  price  of  fresh  fish,  which  was  thus  caused  by  the  defend- 
ants' infringement,  was  one  and  one-half  cents  per  pound  ; 
and  the  consequent  profits  made  by  the  defendants, 
amounted  to  more  than  six  thousand  dollars.  But  the 
court  held  that  those  profits  could  not  be  recovered  by  the 
patentee,  because  they  did  not  directly  result  from  the 
infringement  of  his  patent. 

§  712.  Where  several  defendants  were  joint  infringers  of 
a  patent,  but  where  all  the  resulting  profits  were  received 
by  part  of  the  wrong-doers,  the  decree  for  profits  will  be 
rendered  only  against  those  defendants  who  realized  them.1 
Where  all  of  the  defendants  realized  profits  during  a  por- 
tion of  the  time  covered  by  the  infringement  in  suit,  and 
where  a  part  of  them  realized  profits  during  the  residue  of 
that  time,  the  respective  profits  may  be  recovered  accord- 
ingly, and  a  decree  be  entered  against  all  of  the  defendants 
for  the  profits  in  which  all  participated,  and  against  a  part 
of  the  defendants  for  the  profits  which  that  part  alone 
realized.2  And  where  one  part  of  the  profits  of  joint 
infringement  was  realized  by  one  of  the  joint  infringers, 
and  the  residue  by  another  ;  the  decree  will  go  against  each, 
for  his  own  share  only.3 

§  713.  Where  a  part  of  the  infringement  of  a  defendant 
resulted  in  profits,  and  the  residue  resulted  in  losses,  the 
complainant  is  entitled  to  recover  those  profits  without  any 
deduction  on  account  of  those  losses.4  Each  infringement 
is  treated  by  itself.  If  it  resulted  in  profit,  that  profit 
belongs  to  the  patentee.  If  it  resulted  in  loss,  that  loss 
must  be  borne  by  the  infringer.  It  cannot  be  set  off  against 


1  Elizabeth  ».   Pavement  Co.  97  238,  1889. 

U.  S.  140,  1877,  4  Callaghan  v.  Myers,  128  U.  8. 

2  Tatham  «.  Lowber,  4  Blatch.  87,  664,    1888;    Crosby   Valve   Co.   v. 
1857;  Herring  v.   Gage,  3  Bann.  &  Safety  Valve  Co.    141   U.    S.  453, 
Ard.  402,   1878;  New  York  Grape  1891;  Graham  v.  Mason,  1  Holmes, 
Sugar  Co.  v.  American  Grape  Sugar  90,  1872;    Steam  Stone  Cutter  Co. 
Co.  42  Fed.  Rep.  456;  1890.  v.  Mfg.  Co.  17  Blatch.  27,  1879. 

3  Covert  v.  Sargent,  38  Fed.  Rep. 


546  PROFITS.  [CHAP.  xxn. 

the  patentee's  right  of  action  for  the  profitable  infringement, 
any  more  than  it  could  be  made  the  basis  of  a  right  of 
action  against  the  patentee  if  no  infringement  had  been 
profitable. 

§  714.  An  account  of  profits  cannot  be  had  where  none 
arose  before  the  action  was  begun,1  but  such  an  account  is 
not  confined  to  those  profits,  nor  indeed  to  those  which 
accrued  before  the  interlocutory  decree  was  entered,  but 
may  be  made  to  -include  all  profits  realized  by  the  defend- 
ant from  infringing  the  complainant's  right,  at  any  time 
prior  to  the  closing  of  the  account.2  And  such  an  account 
will  be  taken  in  conformity  with  the  statutes  relevant  thereto, 
as  they  existed  at  the  respective  dates  when  the  infringe- 
ment occurred.3 

§  715.  The  generic  rule  for  ascertaining  the  amount  of 
the  profits  recoverable  in  equity  for  the  infringement  of  a 
patent,  is  that  of  treating  the  infringer  as  though  he  were  a 
trustee  for  the  patentee  in  respect  of  the  profits  which  he 
realized  from  his  infringement.4  The  specific  rules  by 
means  of  which  this  generic  rule  is  administered,  are  some- 
what numerous  and  somewhat  elastic.  They  are  adapted 
to  the  varying  natures  of  patented  inventions,  and  to  the 
varying  circumstances  under  which  the  patents  for  those 
inventions  are  respectively  infringed.5  They  all  require  the 
best  evidence,  of  which  the  nature  of  each  particular  case 
to  which  they  may  be  respectively  applied,  will  reasonably 
admit,6  and  that  evidence  must  be  reasonably  definite 7  and 
convincing.8 

1  Marsh  ®.  Nichols,  128  U.  S.  616,      u.  g.  143,  1888. 

1888.  5  Wetherill  v.  Zinc  Co.  1  Bann.  & 

2  Rubber  Co.  v.  Goodyear,  9  Wai-      Ard.  486,  1874. 

lace,  800,  1869;  Knox  «.  Quicksilver  B  Herring  «.  Gage,  3  Bann.  &  Ard. 

Mining  Co.  6  Sawyer,   435,    1878;  399,  1878;  Emigh  ®.  Railroad  Co.  6 

Creamer  v.  Bowers,  35  Fed.  Rep.  Fed.  Rep.  283,  1881. 

209,  1888.  ->  Fischer  v.  Hayes,  39  Fed.  Rep. 

3  Untermeyer  v.  Freund.  58  Fed.  613,  1889. 

Rep.  212,  1893.  *  Locomotive  Safety  Truck  Co.  v. 

4  Root  v.  Railway  Co.  105  U.  S.       Railroad  Co.  2  Fed.  Rep.  681,  1880. 
214,  1881;  Tilghman  v.  Proctor,  125 


CHAP.  XXII.]  .PROFITS.  547 

§  716.  The  patentee's  royalty  is  no  measure  of  the  defend- 
ant's profits,1  even  in  a  case  where  the  patentee  habitually 
exercised  his  exclusive  right  by  granting  licenses  to  others.2 
Nor  are  any  other  facts  which  relate  to  the  measure  of  the 
complainant's  damages,  material  to  inquiries  touching  the 
amount  of  the  defendant's  profits.3 

§  717.  The  difference  between  the  amount  it  cost  the 
defendant  to  make  and  sell  his  specimens  of  the  patented 
thing,  and  the  amount  which  he  received  for  those  speci- 
mens, is  in  many  cases  the  amount  of  his  profits.4  That 
is  the  fact  where  the  only  infringement  consisted  of  such 
making  and  selling,  and  where  no  part  of  ascertainable 
cost  or  value,  other  than  those  covered  by  the  patent  in 
suit,  entered  into  the  composition  of  the  specimens  which 
were  made  and  sold.5  In  the  first  case  just  cited,  it  appears 
that  the  patent  did  not  cover  all  the  elements  of  the  articles 
of  merchandise  which  were  made  and  sold  by  the  defendant. 
But  those  unpatented  elements  were  disregarded  in  that 
case,  because  the  conduct  of  the  defendant  had  rendered 
impossible  a  separate  account  of  the  profits  due  to  the 
patented,  and  those  due  to  the  unpatented  features  of  those 
articles.  In  the  second  of  the  cited  cases,  it  appeared  that 
the  pavement  which  was  made  by  the  New  Jersey  Wood 
Paving  Co.  for  the  city  of  Elizabeth,  contained  the  entire 
invention  of  the  complainant,  and  contained  an  addition 
thereto,  which  addition  might  or  might  not  have  contributed 
to  the  profit  which  resulted  to  the  Paving  Co.  from  its  con- 
tract. Under  those  circumstances,  the  Supreme  Court  held 
that  the  entire  profit  should  go  to  the  patentee,  because  it 


1  Knox  v.  Quicksilver  Mining  Co.  Fed.   Rep.   872,   1888;    Am  Ende  v. 
6  Sawyer,  430,  1878.  Seabury,  43  Fed.  Rep.  672,  1890. 

2  Tilghman  «.  Proctor,  125  U.  S.          5  Rubber  Co.  v.  Goodyear,  9  Wal- 
143,  1888;    Wooster  v.  Taylor,   14  lace,  803,  1869;  Elizabeth  ».  Pave- 
Blatch.  403,  1878.  ment  Co.  97  U.  S.  141, 1877;  Warren 

3  Elizabeth  v.  Pavement  Co.  97  c.  Keep,  155  U.  S.  268,  1894;  Jen. 
U.  S.  143, 1877.  kins  v.   Greenwald,    1   Bond,   141, 

4  Simpson  v.  Davis,  22  Fed.  Rep.  1857;  Sayre  v.  Scott,  55  Fed.  Rep. 
444,  1884;  Shannon  v.  Brunei',  33  975,  1893. 


548  PROFITS.  [CHAP.  XXII. 

was  not  ascertainable  how  much  was  due  to  the  additional 
element.  The  principle  of  both  these  precedents  on  this 
point  appears  to  be,  that  where  a  defendant  mingled  profits 
which  he  made  as  an  infringer,with  those  he  made  otherwise, 
and  where  there  is  no  criterion  by  means  of  which  they 
can  be  separated,  he  must  submit  to-  the  recovery  of  the 
whole.  In  the  third  case,  the  infringement  consisted  in 
making  and  selling  a  particular  kind  of  stove  grates,  which 
was  admitted  to  infringe  all  the  claims  of  the  complainant's 
patent  thereon.  The  Supreme  Court  affirmed  a  decree  for 
the  difference  between  the  complainant's  evidence  of  the 
cost  of  making  the  grates,  and  the  amount  for  which  the 
defendant  sold  them. 

§  718.  When  taking  an  account  of  profits  in  the  method 
indicated  in  the  last  section,  it  is  generally  easy  to  ascertain 
the  amount  which  the  defendant  realized  for  the  articles 
which  he  made  and  sold ;  but  it  is  generally  difficult  to 
determine  how  much  it  cost  him  to  make  and  sell  them. 
One  such  inquiry  occupied  ex-Chancellor  WALWOBTH,  as 
master,  more  than  ten  years,  and  occupied  the  judge  who 
passed  upon  the  exceptions  to  his  report  at  least  as  many 
weeks.1  When  such  accounts  are  taken,  the  elements  which 
are  allowed  to  enter  into  that  cost  are  the  following : 

1.  The  market  value  of  materials  on  hand  at  the  time  the 
infringement  began,  and  the  actual  cost  of  materials  subse- 
quently purchased,  but  not  the  market  value  of  the  latter  at 
the  time  they  were  used  in  infringing.2 

2.  Money  paid  in  good  faith  to  employees  engaged  in 
making  and  selling  the  infringing  articles,  even  where  those 
employees  were  officers  or  stockholders  of  the  infringing 
corporation.3 

3.  Proper  remuneration  for  the  labor  of  the  infringer  in 
conducting  the  infringement.     This  element  has  been  disal- 

1  Troy  Iron  &  Nail    Factory  v.  lace,  803, 1869;  American  Nicholson 
Corning,  6  Blatch.  328,  1869.  Pavement  Co.  v.  Elizabeth.  1  Bann. 

2  Rubber  Co.  «.  Goodyear,  9  Wai-  &  Ard.    442,    1874;     Steam    Stone 
lace,  803,  1869.  Cutter  Co.  v.  Mfg.  Co.  17  Blatch. 

3  Rubber  Co.  «.  Goodyear,  9  Wai-  29,  1879. 


CHAP.  XXII.]  PROFITS.  549 

lowed  in  one  case  j1  but  the  same  reasoning  which  justified 
the  Supreme  Court  in  allowing  the  members  of  a  defendant 
corporation  for  their  personal  services,  calls  for  the  same 
allowance  where  the  men  who  infringe,  do  so  as  partners  or 
as  individuals.  Where  a  number  of  men  form  a  corporation 
and,  as  such,  infringe  a  patent  by  making  and  selling  speci- 
mens of  a  patented  thing,  the  Supreme  Court  approves  a 
proper  allowance  for  their  labor,  being  made  an  element  in 
the  cost  of  those  specimens,  when  those  men  are  forced  to 
pay  over  those  profits  to  the  patentee.  There  is  the  same 
reason  for  making  the  same  allowance,  where  two  such  men 
make  and  sell  such  specimens  as  partners,  or  where  one  man 
does  so  alone.  But  it  is  the  labor  of  the  infringer  in  making 
or  selling  infringing  articles,  or  in  performing  an  infringing 
process,  that  is  contemplated  in  this  paragraph.  Salaries 
which  are  received  by  partners  in  the  place  of  partnership 
profits,  or  which  are  paid  for  a  general  oversight  of  part- 
nership business,  do  not  come  in  this  category.2 

4.  Interest  on  borrowed  money;3  but  not  interest  on  cap- 
ital stock,  except  where  the  property  represented  by  the 
capital  stock  was  used  only  in  conducting  the  infringing 
business,  or  where  the  defendant  clearly  proves  what  por- 
tion of  the  value  of  that  property  was  thus  used,  so  as  to 
enable  an  apportionment  of  interest  to  be  made  between 
the  infringing  business,  and  the  other  business  contempo- 
raneously conducted  by  the  defendant.4 

5.  Expenses  of  selling,  including  advertising.5 

6.  Miscellaneous  expenses  equitably  chargeable  to  the 
infringing  business." 

§  719.  Where  the  thing  made  and  sold  by  the  defendant 
contained  not  only  the  invention  of  the  complainant,  but 


1  Williams  v.  Leonard,  9  Blatch.  8  Rubber  Co.  •».  Goodyear,  9  Wal- 
476,  1872.  lace,  804,  1869;  Manufacturing  Co. 

2  Callaghan  «.  Myers,  128  U.  8.  «.  Cowing,  105  U.  S.  257,  1884;  La 
663,  1888.  Baw  v.  Hawkins,  2  Bann.  &  Ard. 

8  Rubber  Co.  v.  Goodyear,  9  Wall.  566,  1877. 

804,  1869.  6  Winchester  Arms  Co.  v  Ameri- 

4  Seabury  v.  Am  Ende,  152  U.  8.  can  Cartridge  Co.  62  Fed.  Rep.  278, 

564.  1894.  1894. 


550  PROFITS.  [CHAP.  XXII. 

contained  also  some  other  invention  or  feature  of  ascertain- 
able  cost  and  provable  value,  the  complainant,  except  in 
design  cases,  can  recover  only  that  part  of  the  defendant's 
profit  which  was  due  to  the  infringing  parts  or  features 
of  the  thing  made  and  sold  by  the  defendant,  and  the 
burden  is  on  the  complainant  to  prove  the  amount  of 
that  part.1  In  doing  that  work,  a  complainant  should 
proceed  in  view  of  the  following  rules ;  but  his  evidence 
needs  not  to  be  severely  accurate,  and  may  be  sufficient 
where  it  furnishes  foundation  for  just  inferences,  rather 
than  certain  knowledge.2 

§  720.  Where  the  defendant  made  and  sold  the  complain- 
ant's invention  separately,  as  well  as  in  connection  with 
other  inventions,  the  profit  which  he  made  on  the  separate 
sales,  is  the  measure  of  that  part  which  is  to  be  credited  to 
the  complainant's  invention,  of  the  profit  which  the  defend- 
ant made  on  the  joint  sales.3  This  is  a  fairer  method  of 
division  in  such  a  case,  than  would  be  a  division  of  the  gross 
profits  in  proportion  of  the  comparative  cost  of  the  elements 
covered  by  the  patent  in  suit,  and  those  not  so  covered ; 
because  the  comparative  cost  is  not  always  the  best  evidence 
of  the  comparative  utility  of  two  devices,  nor  of  the  com- 
parative profit  at  which  they  can  be  made  and  sold.4 

§  721.  Where  the  defendant  has  paid  or  contracted  to  pay 
other  patentees  a  royalty  for  that  part  of  the  thing  made 
and  sold  by  him,  which  is  not  covered  by  the  complainant's 
patent,  that  royalty  may  be  taken  as  the  measure  of  that 
part  of  the  gross  profits  due  to  that  part  of  the  article  in 
suit.5  But  it  seems  that  this  rule  is  not  to  be  applied  in 
any  case  where  the  division  of  the  profits  can  be  made 


1  Blake  «.  Robertson,  94  U.   S.  Fed.  Rep.  597,  1890. 

733,  1876;  Garretson  v.  Clark,  111  3  Mason  v.  Graham,  23  Wallace, 

U.  S.  120,  1884;  Dobson  v.  Carpet  276,  1874. 

Co.  114  U.  S.  445,  1884;  Dobson  v.  *  Graham  v.  Mason,  1  Holmes,  89, 

Dornan,  118  U.  S.  17,  1885;  Key-  1872. 

stone  Mfg.  Co.  ®.  Adams,  151  U.  S.  5  Elizabeth  v.  Pavement  Co.  97 

147,  1894.  U.  8. 141, 1877;  La  Baw  v.  Hawkins, 

2  Adams  •».  Keystone  Mfg.  Co.  41  2  Bann.  &  Ard.  565,  1877. 


CHAP.  XXII.]  PROFITS.  551 

under  the  rule  of  the  last  section ;  because  it  may  some- 
times be  that  the  profits  due  to  that  part  of  the  infringing 
thing  which  is  not  covered  by  the  complainant's  patent,  are 
larger  than  the  royalty  which  the  defendant  had  to  pay  for 
the  right  to  make  and  sell  that  part. 

§  722.  Where  the  thing  made  and  sold  by  the  defendant 
would  be  useless  for  its  special  purpose  without  the  part 
covered  by  the  complainant's  patent,  or  where  no  other 
known  article  would  answer  that  purpose  well  enough  to 
find  purchasers  ;  all  the  profits  which  the  infringer  derived 
from  making  and  selling  the  entire  thing  are  clearly  due  to 
the  patented  part,  and  are  therefore  recoverable  by  the 
complainant.1 

§  723.  Where  the  profits  due  to  the  infringing,  and  those 
due  to  the  non-infringing,  elements  of  a  defendant's  article 
of  manufacture  and  sale  cannot  be  separated  by  any  other 
rule,  then  the  apportionment  may  be  made  by  dividing  the 
aggregate  profits  in  proportion  of  the  respective  cost  of  the 
different  parts.  This  method  of  making  the  division  is 
based  on  the  presumption  that  similar  articles  of  merchan- 
dise are  sold  at  a  like  percentage  of  profit  on  the  cost  of 
producing  them.  But  this  is  not  likely  to  be  the  fact  where 
one  of  those  articles  is  covered  by  a  patent  while  the  others 
are  not  so  covered,  because  monopolies  tend  to  enhance 
prices.  This  method  of  making  the  required  division  will 
therefore  always  be  more  favorable  to  the  defendant  than 
to  the  complainant ;  where  no  part  of  the  article  made  and 
sold  by  the  former  is  covered  by  a  patent,  except  the  part 
which  is  covered  by  the  patent  of  the  latter.  The  principle 
of  this  method  was  approved  in  .Rubber  Co.  v.  Goodyear,2 
though  in  that  case  it  was  applied  to  the  work  of  dividing 
profits  between  things  covered  and  other  things  not  covered 
by  the  complainant's  patent,  instead  of  between  parts  of 


i  Manufacturing  Co.  v.  Cowing,  Co.  141  U.  S.  453, 1891. 

105  U.  8.   256,   1881;     Hurlbut  v.  a  Rubber  Co.  v.  Goodyear,  9  Wai- 

Schillinger,  130    U.  S.    456,   1889;  lace,  802,  1869. 
Crosby  Valve  Co.  •».  Safety  Valve 


552  PROFITS.  [CHAP.  XXII. 

the  same  thing  so  covered,  and  other  parts  not  so  covered. 

§  723<z.  In  cases  for  infringement  of  design  patents,  a 
special  statute  provides  that  the  total  profits  made  from  the 
manufacture  or  sale  of  the  article  or  articles,  to  which  the 
design,  or  a  colorable  imitation  thereof,  has  been  applied, 
shall  be  recoverable.1  But  in  order  to  recover  under  this 
statute,  the  complainant  must  show  that  the  defendant 
knew  of  the  complainant's  design,  and  knew  of  the  com- 
plainant's patent,  or  at  least  knew  of  facts  which  put  him 
upon  his  inquiry  for  that  patent,2  and  knew  that  the  design 
was  applied  to  the  infringing  article,  without  the  license  of 
the  owner  of  the  patent.3 

§  724.  Where  the  infringement  consisted  only  in  selling 
specimens  of  the  article  covered  by  the  complainant's  patent, 
the  profits  may  be  readily  ascertained  by  deducting  the 
cost  of  purchasing  and  selling  the  articles,  from  the  amount 
received  for  them  when  sold.  Where  the  subject-matter 
of  the  patent  is  a  part  of  a  larger  article,  and  where  a  sepa- 
rate price  is  paid,  and  a  separate  price  is  obtained  for  it, 
the  gross  profit  on  the  thing  covered  by  the  patent  may  be 
ascertained  by  deducting  the  former  from  the  latter.  But 
in  such  a  case,  the  complainant  is  not  entitled  to  recover 
the  whole  of  that  gross  profit.  It  must  be  charged  with 
such  a  proportion  of  the  expenses  incurred  in  selling  the 
entire  article,  as  the  aggregate  money  received  from  the 
infringing  device  bears  to  the  aggregate  received  for  the 
entire  apparatus  or  machine.4  The  principle  of  this  rule  is 
also  applicable  where  the  infringer  made  the  articles  he 
sold  instead  of  buying  them ;  and  the  rules  applicable  to 
the  latter  class  of  cases,  and  heretofore  set  forth,  are  appli- 
cable, with  some  reasonable  modifications,  to  cases  where 
the  infringer  bought  the  infringing  articles  which  he  sold, 
instead  of  making  them  himself. 

1  24  Statutes  at  Large,  Chap.  105,      484,  1893. 

p.  387;   Uutermeyer  «.  Freund,  58  3  Anderson  ®.  Pittsburgh  Lumber 

Fed.   Rep.    211.    1893;     Ripley    v.  Co.  47  Fed.  Rep.  68,  1891. 

Elson  Glass  Co.  49  Fed.  Rep.  927,  4  The  Tremolo  Patent,  23  Wal- 

1892.  lace,  528,  1874. 

2  Smith  v.  Stewart,  55  Fed.  Rep. 


CHAP.  XXII.]  PROFITS.  553 

§  725.  Where  unlawful  using  of  a  patented  article  or  pro- 
cess constitutes  the  infringement  involved  in  an  action  in 
equity,  the  infringer's  profits  are  ascertained  by  a  rule  quite 
different  from  either  of  the  foregoing.  That  rule,  in  its 
generic  character,  may  be  formulated  as  follows  :  The 
advantage  which  the  defendant  derived  from  using  the  com- 
plainant's invention,  over  what  he  could  have  derived  from 
using  any  other  process  or  thing,  which  was  known  prior 
to  that  invention,  constitutes  the  profits  which  the  com- 
plainant is  entitled  to  recover.  The  other  process  or  thing 
mentioned  in  the  rule,  is  called  the  standard  of  comparison 
in  the  case.  While  that  standard  of  comparison  must  have 
been  known  prior  to  the  complainant's  invention,1  it  needs 
not  to  have  been  open  to  the  public  at  any  time,  except  in 
the  sense  that  it  must  be  open  to  the  public  so  far  as  the 
complainant's  patent  in  suit  is.  concerned.2  The  advantage 
which  is  contemplated  by  the  general  rule,"  is  the  result  of 
some  superiority  of  the  complainant's  invention  over  the 
standard  of  comparison  ;  and  that  superiority  may  consist 
in  the  fact  that  the  complainant's  invention  performs  the 
function  common  to  both,  with  equal  cheapness  and  greater 
excellence,  or  with  greater  cheapness  and  equal  excellence, 
or  with  greater  cheapness  and  greater  excellence  ;  and  there- 
fore the  advantage  may  consist  either  in  affirmative  gain  or 
in  saving  from  loss,  or  in  both  of  those  elements. 

§  729.  The  advantage  consists  in  an  affirmative  gain,  in 
cases  wherein  the  patented  process  or  thing  produces  a 
valuable  article  from  materials  which  otherwise  would  be 
useless,  or,  if  useful  at  all,  useful  only  for  purposes  of  infe- 
rior value.  The  Goodyear  process  patent,3  if  it  had  been 
valid,  would  have  been  a  patent  of  this  sort,  and  would  have 
been  entitled  to  an  account  of  profits  ascertained  according 

1  Turrill  v.  Illinois  Central  R.  R.  1892;  Lawther  «.  Hamilton,  04  Fed. 

Co.   20  Fed.  Rep.   912;    following  Rep.  224,  1892. 

Cawood  Patent,  94  U.  S.  710;  and  2  McCreary  v.  Pennsylvania  Canal 

affirmed  by  Illinois  Central  R.  R.  Co.  141  U.  S.  464,  1891. 

Co.  v.  Turrill,  110  U.  S.  302, 1884;  8  Rubber  Co.  v.  Goodyear,  9|Wal- 

Sessions  v.  Romadka,  145  U.  8.  45,  lace,  794,  1869. 


554  PEOFITS.  [CHAP.  xxn. 

to  the  rule  of  Section  725.  But  as  the  only  patent  sustained 
in  the  Goodyear  case  was  the  patent  for  the  product,  and 
inasmuch  as  that  patent  was  infringed  by  the  defendant 
only  in  making  and  selling  specimens  of  the  invention  it 
covered,  the  profits  were  ascertained  on  an  entirely  different 
plan. 

§  730.  But  the  advantage  consisted  in  saving  from  loss, 
in  most  of  the  cases  which  have  been  adjudicated  under  the 
general  rule. 

In  Mowry  v.  Whitney,1  the  advantage  was  a  saving  of 
materials  and  labor,  realized  from  the  use  of  the  complain- 
ant's process  in  manufacturing  car-wheels,  as  compared 
with  what  it  would  have  been  necessary  to  expend  in  pro- 
ducing similar  car-wheels,  salable  at  the  same  price,  with- 
out the  use  of  that  process.  In  the  case  of  the  Cawood 
Patent2  the  advantage  was  a  saving  of  labor  and  of  fuel, 
realized  from  the  use  of  the  complainant's  swage-block  in 
mending  the  exfoliated  ends  of  railroad  rails,  as  compared 
with  the  labor  and  fuel  it  would  have  been  necessary  to 
expend  in  mending  those  rails  upon  a  common  anvil. 

In  Mevs  v.  Conover,3  the  advantage  was  a  saving  of  labor 
in  splitting  kindling- wood  by  means  of  the  patented  machine 
of  the  complainant,  as  compared  with  the  labor  which  would 
have  been  required  to  split  the  same  quantity  of  wood  by 
hand,  or  by  any  other  machine.  The  justice  of  the  decision 
last  cited  has  sometimes  been  questioned ;  on  the  ground 
that  there  was  no  actual  profit  made  by  the  infringer  in 
splitting  the  wood,  and  on  the  contention  that  he  would  not 
have  split  the  wood  at  all  if  he  had  been  obliged  to  do  so 
otherwise  than  by  the  patented  machine,  and  that  to  save  a 
man  from  a  loss  which  he  would  not  have  incurred  in  any 
event,  is  not  to  confer  a  profit  upon  him,  and  therefore  that 
savings  ought  not  to  be  accounted  as  profits  except  where 
they  result  in  actual  gains.  But  the  case  as  reported  from 


1  Mowry  v.  Whitney,  14  Wallace,      1876. 

651,  1371.  3  Mevs  ®.  Conover,  125  U.  S.  144, 

2  Cawood  Patent,   94  U.  S.  709,       1876. 


CHAP.  XXII.]  PROFITS.  555 

the  circuit  court,1  shows  that  the  defendant  did  continue  to 
split  kindling-wood  after  the  bringing  of  the  suit  caused 
him  to  discontinue  the  use  of  the  complainant's  invention 
for  that  purpose.  It  was  probably  necessary  for  him  to  do 
so,  in  order  to  hold  his  customers  for  other  kinds  of  fuel. 
Therefore  the  case  is  not  a  precedent  for  the  proposition 
that  savings  are  profits,  where  there  was  no  actual  profit  in 
the  particular  business  in  which  the  complainant's  invention 
was  used,  and  where  there  was  no  reason  why  the  defend- 
ant should  have  pursued  that  business,  if  obliged  to  do  so 
at  a  positive  loss.  It  is  entirely  consistent  with  the  princi- 
ple of  the  general  rule  to  hold  that  savings  are  profits,  only 
so  far  as  they  result  in  affirmative  gains  from  the  particular 
business  in  which  the  infringer  used  the  patented  invention ; 
unless  that  particular  business  was  so  necessary  to  the  gen- 
eral business  of  the  infringer,  that  he  could  have  afforded 
to  conduct  it  at  an  additional  loss,  at  least  equal  to  the 
saving  he  made  from  the  use  of  the  complainant's  invention, 
and  therefore  presumably  would  have  conducted  it  at  that 
loss,  if  he  had  not  used  that  invention.8 

In  Webster  Loom  Co.  v.  Higgins,3  the  advantage  was  a 
saving  of  machinery  for  weaving  carpets,  it  appearing,  in 
the  aspect  of  the  proofs  most  favorable  to  the  complainant 
that  the  defendants  could  have  made  all  the  carpeting  they 
did  make,  if  instead  of  using  their  sixty-one  infringing 
looms,  they  had  used  twice  that  number  of  non-infringing 
looms.  On  this  basis,  the  complainant  contended  that  it  was 
entitled  to  recover  all  the  profits  which  were  made  by  the 
defendants,  on  those  yards  of  carpeting  which  they  made 
on  the  sixty-one  infringing  looms,  over  and  above  the  much 
smaller  number  of  yards  which  they  could  have  made  on 
sixty-one  non-infringing  looms.  But  that  contention  was 
overruled  by  the  court,  on  the  ground  that  nothing  hindered 
the  defendants  from  using  one  hundred  and  twenty -two  non- 

1  Conover®.  Mevs,  11  Blatch,  198,  Tuttle  v.  Claflin,  62  Fed.  Rep.  455, 
1873.  1894. 

2  Celluloid  Mfg.  Co.  v.  Cellonite  3  Webster  Loom  -Co.  v.  Higgins, 
Mfg.  Co.  40  Fed.  Rep.  477,  1889;  43  Fed.  Rep.  675,  1890. 


556  PEOFITS.  [CHAP.  xxn. 

infringing  looms,  instead  of  sixty-one  infringing  looms,  and 
that  the  cost  of  the  use  of  whatever  number  of  non-infring- 
ing looms  would  have  been  necessary  to  make  the  carpeting 
which  was  made  on  the  sixty-one  infringing  looms,  was  the 
proper  standard  of  comparison  in  the  case. 

In  Sessions  v.  Romadka,1  the  saving  consisted  in  the  dif- 
ference between  the  cost  of  the  patented  trunk  fasteners, 
which  the  defendant  used  in  manufacturing  trunks,  and  the 
greater  cost  of  the  straps,  buckles,  and  dowels  previously 
in  use,  in  the  place  of  those  trunk  fasteners. 

§  731.  The  advantage  referred  to,  consisted  both  in  affirm- 
ative gains  and  in  savings  from  loss,  in  a  number  of  import- 
ant cases.  In  Tilghrnan  v.  Proctor,2  it  consisted  in  savings 
of  lime  and  sulphuric  acid  ;  and  in  gain  on  account  of  the 
increased  value  of  the  glycerine  obtainable  by  means  of  the 
complainant's  invention,  as  compared  with  that  obtainable 
by  other  processes.  In  Wetherill  v.  Zinc  Co.3  the  advan- 
tage consisted  in  savings  of  coal  and  labor,  in  reducing  zinc 
ores ;  and  in  gain  on  account  of  the  increased  proportion 
of  zinc  obtained  by  the  complainant's  process,  as  compared 
with  other  processes  used  for  that  purpose. 

§  732.  The  standard  of  comparison  set  up  by  a  defendant 
needs  not  to  have  been  used  by  him  at  any  time,4  and  where 
it  never  was  so  used,  the  evidence  of  its  utility,  as  compared 
with  the  invention  in  suit,  may  be  drawn  from  persons  who 
have  used  the  two  under  the  same  conditions  ; 5  or  from  any 
other  source  which  is  capable  of  furnishing  convincing  evi- 
dence upon  the  point.  And  even  where  the  defendants 
have  used  the  standard  of  comparison,  they  may  show  that 
it  was  used  with  better  results  by  others,  and  may  have  the 
benefit  of  that  superiority  on  the  accounting.6 


1  Sessions  ».  Romadka,  145  U.  8.  4  Locomotive  Safety  Truck  Co.  «. 
45,  1892.  Railroad  Co.  2  Fed.  Rep.  679,  1880. 

2  Tilghman  «.  Proctor,  125  U.  S.  8  Emigh  v.   Railroad  Co.  6  Fed. 
142,  1888.  Rep  283,  1881. 

3  Wetherill  v.  Zinc  Co.  1  Bann.  &  «  Tilghman  v.  Proctor,  125  U.  8. 
Ard.  486,  1874.  150,  1888. 


CHAP.  XXII.]  PROFITS.  557 

§  734.  To  determine  what  is  the  proper  standard  of  com- 
parison in  a  particular  case,  it  is  not  necessary  for  the 
complainant  to  affirmatively  prove  that  a .  particular  thing 
was  absolutely  the  next  best  thing  to  his  invention  at  the 
time  of  the  infringement.  Such  a  requirement  would  not 
be  reasonable,  because  it  could  never  be  performed.  It 
would  involve  evidence  enough  to  negative  the  existence  of 
a  better  thing  than  the  one  fixed  upon ;  and  to  prove  that 
no  better  thing  existed  anywhere,  would  obviously  be  impos- 
sible. The  regular  course  of  practice  on  the  point  is  for  the 
complainant  to  select  what  appears  to  him  to  be  the  proper 
standard  of  comparison,  and  to  produce  evidence  to  prove 
what  advantage  the  defendant  derived  from  using  the  com- 
plainant's invention  over  what  he  could  have  derived  from 
using  the  thing  so  selected.  Where  the  defendant  knows  of 
no  standard  of  comparison  more  favorable  to  himself  than 
the  one  selected  by  the  complainant,  the  only  remaining 
issue  relates  to  the  utility  and  cheapness  of  that  thing,  as 
compared  with  the  complainant's  invention.1  Where  the 
defendant  is  not  satisfied  that  the  complainant  has  made 
the  proper  selection  of  a  standard  of  comparison,  he  may 
select  another,  and  may  produce  evidence  to  show  its  utility 
and  cheapness  as  compared  with  that  of  the  invention  cov- 
ered by  the  patent  in  suit ;  and  when  the  case  comes  to  a 
hearing  before  the  master,  the  first  question  to  be  decided 
by  him  will  be  as  to  which  of  the  parties  has  made  the 
proper  selection,  and  that  standard  will  be  used  in  the 
accounting,  whether  it  was  selected  by  the  complainant  or 
by  the  defendant ;  and  all  evidence  about  the  merits  of  the 
other  proposed  standard  will  become  and  remain  immaterial 
to  the  case.? 

The  true  standard  of  comparison  in  a  particular  case  is 
that  prior  thing  which,  next  to  the  complainant's  invention, 
could  have  been  most  advantageously  used  by  the  defendant 


1  Emigh  «.  Railroad  Co.  6  Fed.          2  Webster  Loom  Co.  v.  Higgins, 
Rep.  285, 1881.  39  Fed.  Rep.  465,  1889. 


558  PROFITS.  [CHAP.  XXII. 

in  place  of  that  invention  at  the  time  he  used  the  latter. 
To  determine  this  point,  comparative  utility  is  one  guide, 
but  regard  must  also  be  had  to  cheapness,  for  the  advantage 
contemplated  by  the  general  rule  of  Section  725  is  the 
equalized  result  of  these  two  elements. 

§  735.  The  rule  of  Section  725  has  no  application  to  those 
cases  of  infringement  which  consist  in  making  and  selling 
a  patented  article,  or  in  the  latter  of  those  acts  alone; 
except  where  a  patented  article  is  used  as  a  component  part 
of  a  much  larger  article  which  is  made  and  sold  by  the 
inf ringer.1  In  Elizabeth  v.  Pavement  Co.  the  infringement 
consisted  only  in  making  the  patented  pavement  to  order ; 
that  is  to  say,  it  consisted  in  making  and  selling  the  pat- 
ented article.  The  defendants  sought  to  have  the  profits 
determined,  under  the  rule  of  Section  725,  by  setting  up 
other  pavements  as  standards  of  comparison,  but  the 
Supreme  Court  held  their  position  on  the  point  to  be  Avith- 
out  foundation.2  The  same  rule  was  also  unsuccessfully 
invoked  in  the  case  of  Burdett  v.  Estey,  though  the  argu- 
ment in  favor  of  its  application  was  supported  by  evidence 
that  the  defendant  might  have  made  and  sold  a  different 
device,  at  nearly  or  quite  the  same  profit  that  he  derived 
from  making  and  selling  the  device  covered  by  the  com- 
plainant's patent.3 

§  736.  Interest  on  infringer's  profits  is  allowed  from  the 
date  of  the  master's  report,-  which  ascertains  the  amount  of 
those  profits.4 

§  739.  After  an  interlocutory  decree  is  entered  directing 
a  master  commissioner  of  the  court  to  take  and  report  an 
account  of  the  defendant's  profits,  or  appointing  a  master 
pro  hac  vice  for  that  purpose,  it  becomes  the  business  of  the 
complainant  to  introduce  evidence  before  such  master  to 


1  Sessions  v.  Romadka,  145  U.  S.  569,  1880. 

48,  1892.  4  Tilghman  v.  Proctor,  125  U.  8. 

2  Elizabeth  v.   Pavement  Co.  97  160,    1887;    Crosby    Valve    Co.    ®. 
U.  8.  141,  1877.  Safety  Valve  Co.  141 '  U.   S.   457, 

3  Burdett  «.  Estey,  3  Fed.  Rep.  1891. 


CHAP.  XXII.]  PROFITS.  559 

prove  the  amount  of  those  profits.  The  complainant  must 
take  the  initiative.  It  is  not  the  province  of  the  master  to 
suggest  any  specific  line  of  proof  or  theory  of  accounting. 
His  function  is  to  pass  upon  whatever  evidence  the  com- 
plainant produces,  in  the  light  of  whatever  is  produced  by 
the  defendant.1  And  his  fees  must  be  paid  by  the  defend- 
ant when  they  accrue,  and  must  be  borne  by  him  in  the 
final  taxation  of  costs,  if  he  is  finally  defeated,2  but  must  be 
borne  by  the  complainant  if  the  bill  is  finally  dismissed.3 

§  740.  The  evidence  upon  which  the  master  may  base  his 
report,  may  consist  of  any  evidence  taken  in  the  case  prior 
to  the  interlocutory  decree,4  and  of  documents  introduced 
and  depositions  taken  by  the  parties  for  the  express  pur- 
pose of  the  accounting,  and  of  testimony  taken  viva  voce  in 
the  presence  of  the  master,5  anywhere  in  the  world,6  and  of 
personal  examination  by  him  of  the  structures  or  processes 
which  are  involved  in  the  questions  before  him.7  If  the 
required  documents  are  not  produced  voluntarily,  the  master 
may  require  their  production ;  and  any  necessary  deposi- 
tions may  be  taken  upon  commissions  to  be  issued  upon  his 
certificate,  from  the  clerk's  office,  or  they  may  be  taken 
according  to  the  acts  of  Congress.8  When  testimony  is 
taken  viva  voce  before  a  master,  either  party  may  require 
that  it  be  taken  down  in  writing,  in  order  that,  if  necessary, 
it  may  be  used  by  the  court.9  In  the  course  of  an  account- 
ing before  a  master,  that  officer  has  full  authority  to  do  all 
acts  and  to  direct  all  proceedings  which  he  may  deem 
necessary  and  proper  to  the  justice  and  merits  of  the  case.10 
If,  for  example,  an  account  to  be  transcribed  or  deduced 
from  the  defendant's  books,  is  necessary  to  a  just  decision 

1  Garretson  v.  Clark,  4  Bann.  &  6  Bate  Refrigeratiug  Co.  v.  Gil- 
Ard.  537,  1879.  lette,  28  Fed.  Rep.  673,  1886. 

2  Urner  v.  Kayton,  17  Fed.  Rep.  7  Piper  v.  Brown,  1  Holmes,  198, 
539,  845,  1883.  1873. 

3  American  Diamond  Drill  Co.  «.  b  Equity  Rule  77;  Revised  Stat- 
Machine  Co.  32  Fed.  Rep.  552, 1885.  utes,  Sections  863,  864.  and   865; 

4  Equity  Rule  80;  Bell  v.  Stamp-  Section  535  of  this  book, 
ing  Co.  32  Fed.  Rep.  549,  1887.  9  Equity  Rule  81. 

5  Equity  Rule  77.  10  Equity  Rule  77. 


560  PROFITS.  [CHAP.  xxu. 

of  the  cause,  the  master  may  make  an  order  that  the  defend- 
ant furnish  such  an  account  by  a  certain  day ;  and  such  an 
order,  when  served  on  the  defendant  by  any  disinterested 
person,  must  be  obeyed,  or  the  defendant  will  be  guilty  of 
contempt  of  court  for  not  obeying  it.1 

§  741.  Objections  to  evidence,  in  order  to  be  availing, 
must  be  made  when  the  objectionable  piece  of  evidence  is 
offered,  or  the  objectionable  question  is  put,  or  the  objec- 
tionable answer  is  given.  If  the  master  is  present  at  the 
time,  he  ought  to  rule  upon  the  objection  at  once,  and  if 
either  party  would  appeal  from  that  ruling,  he  must  enter 
an  immediate  objection  thereto.  If  the  ruling  is  against 
the  evidence  objected  to,  it  is  necessary  for  the  party  who 
offers  the  evidence,  if  he  would  appeal  from  the  ruling,  to 
do  so  by  an  immediate  motion  to  the  court  to  direct  the 
master  to  reverse  his  decision  upon  the  point. 3  The  reason 
for  this  practice  is  that  if  such  an  appeal  could  be  taken  in 
an  exception  to  the  master's  report,  it  would,  when  taken 
successfully,  necessitate  a  recommittal  of  the  case  to  the 
master,  in  order  to  enable  him  to  admit  the  evidence  which 
he  erroneously  rejected.  If  the  master's  ruling  is  in  favor 
of  the  evidence  objected  to,  that  evidence  will  of  course  be 
admitted  subject  to  the  objection,  and  that  ruling  may  be 
reviewed  by  the  court  on  exceptions  to  the  report  of  the 
master,  as  well  as  by  means  of  an  immediate  motion.  It 
may  be  reviewed  on  exceptions,  because,  if  it  is  reversed, 
that  reversal  will  not  necessitate  any  addition  to  the  evi- 
dence before  the  court,  but  will  merely  cause  the  court  to 
eliminate  the  objectionable  evidence  from  among  the  factors 
of  the  problems  before  it. 

If  the  master  is  not  present  when  the  cause  of  an  objec- 
tion arises,  the  practice  is  for  the  notary  or  other  magistrate 
who  is  taking  the  deposition,  to  note  the  objections  thereon, 
and  to  take  down  the  evidence  objected  to  ;  for  he  has  no 
authority  to  make  any  ruling.  In  such  cases  the  objections 


1  Kerosene  Lamp  Heater  Co.  t>.          2  Celluloid  Mfg.  Co.  v.  Cellonite 
Fisher,  5  Bann.  &  Ard.  79, 1880.  Mfg.  Co.  40  Fed.  Rep.  477,  1889. 


CHAP.  XXII.]  PROFITS.  561 

which  are  noted  upon  the  depositions,  may  be  brought  to 
the  attention  of  the  master  on  the  argument  before  him,  and 
his  specific  rulings  thereon  may  be  required,  and  those  rul- 
ings may  be  reviewed  by  the  court,  on  exceptions  to  the 
report  of  the  master,  as  far  as  they  have  affected  that 
report.  Most  of  the  points  stated  in  this  section  are  con- 
tained in  an  excellent  decision  of  Judge  W.  D.  SniPMAN,1  and 
the  residue  are  deducible  from  that  decision,  or  from  plain 
principles  of  practice. 

§  742.  The  extent  of  the  defendant's  infringement  must 
be  determined  by  the  master  in  order  to  enable  him  to 
ascertain  the  amount  of  the  profits  which  the  defendant 
derived  from  that  infringement.  Where  the  infringement 
was  all  alike,  or  where  the  interlocutory  decree  specifies 
the  particular  doings  of  the  defendant  which  are  to  be 
accounted  for  as  infringements,  the  only  question  for  the 
master  to  decide  on  this  point  is  a  question  of  quantity. 
But  where  the  interlocutory  decree  merely  directs  the 
master  to  take  and  report  an  account  of  the  profits  which 
the  defendant  derived  from  infringing  the  complainant's 
patent,  and  where  the  complainant  claims  that  certain 
doings  of  the  defendant  which  were  not  proved  prior  to  the 
interlocutory  decree,  constitute  such  an  infringement,  it 
becomes  the  duty  of  the  master  to  decide  the  question  of 
infringement  involved.2  Nor  would  it  be  unprecedented  for 
a  court,  when  directing  a  master  to  take  and  report  an 
account  of  iufringers'  profits,  to  direct  him  also  to  decide 
and  report  which  of  various  machines  used  by  the  defend- 
ant were  infringements  of  the  complainant's  patent,  and  to 
make  up  his  account  accordingly,3  or  for  the  master  to  spon- 
taneously report  upon  a  form  of  infringement  which  was 
not  previously  before  the  court.4  But  the  most  convenient 


1  Troy  Iron  and  Nail  Factory  v.  Co.  53  Fed.  Rep.  245, 1892. 

Corning,  6  Blatch.  833,  1869.  3  Cawood   Patent,  94  U.  8.    708, 

3  Knox  v.  Quicksilver  Mining^Co.  1876. 

6  Sawyer,   436,   1878;    Ball  Glove  *  Adams  t>.  Keystone  Mfg.  Co.  41 

Fastening  Co.  v.  Socket  Fastener  Fed.  Rep.  596,  1890. 


562  PROFITS.  [CHAP.  xxn. 

and  least  expensive  practice  is  for  the  court  to  decide  all 
questions  of  infringement,  before  entering  an  interlocutory 
decree. 

§  743.  Where  the  alleged  infringements  involved  in  a  suit 
are  of  several  sorts,  the  master  generally  ought  to  report 
in  a  separate  item  the  profits  due  to  each  kind ;  so  that  the 
Circuit  Court  on  exceptions,  or  a  higher  court  on  an 
appeal,  may  render  a  decree  for  part  or  for  all  of  those 
items,  according  to  its  decision  upon  the  questions  of 
infringement  involved.  This  is  but  a  rule  of  convenience,  and 
may  be  departed  from  when  convenience  would  thus  be 
better  served.  Where  the  defendant  used  two  different 
sorts  of  machines,  both  of  which  the  complainant  claims 
infringe  his  patent,  if  the  points  upon  which  those  questions 
of  infringement  depend  are  apparently  the  same  in  both 
cases,  and  if  the  two  sorts  of  machines  were  so  used  by 
the  defendant,  that  it  would  be  difficult  to  separate  the 
profits  derived  from  the  use  of  one  from  those  flowing  from 
the  use  of  the  other,  it  will  be  most  convenient  not  to 
attempt  to  do  so.  In  such  a  case  there  is  but  little  probabil- 
ity that  the  courts  will  hold  one  of  the  two  sorts  of  machines 
to  infringe,  while  holding  that  the  other  does  not,  and  there 
is  correspondingly  little  probability  that  a  necessity  will 
arise  for  a  division  of  the  profits  due  to  the  use  of  the  two 
kinds. 

§  744.  A  draft  report  of  a  mastery  in  chancery,  is  one 
which  the  master  draws  up  after  the  testimony  has  all  been 
taken,  and  the  parties  have  been  heard  in  argument  on  that 
testimony,  and  the  master  has  formed  an  opinion  on  the 
questions  involved  in  the  reference  before  him.  Such  a 
report  is  requisite  to  enable  the  parties  to  correct  any  mis- 
apprehension into  which  the  master  may  have  fallen,  with- 
out the  alternative  necessity  of  presenting  the  point  to  the 
court.  When  completed,  such  a  report  is  either  filed  in  the 
case,  or  served  on  the  parties  or  their  solicitors ;  and  it 
thereupon  devolves  upon  any  party  who  is  dissatisfied  with 
the  master's  finding,  to  file  such  exceptions  to  his  draft 
report,  as  will  call  his  attention  to  each  alleged  error  of 


CHAP.  XXII.]  PROFITS.  563 

which  the  dissatisfied  party  proposes  to  complain. l  It  then 
becomes  the  duty  of  the  master  to  consider  or  reconsider 
the  questions  involved  in  those  exceptions,  and  thereupon 
to  prepare  and  file  his  final  report  in  the  case.  The  latter 
will  be  identical  with  the  draft  report,  if  the  consideration 
of  the  exceptions  to  the  earlier  document  fails  to  convince 
the  master  that  it  was  wrong  ;  but  if  he  is  so  convinced,  he 
will  concert  his  final  report  in  such  a  manner  as  to  make  it 
embody  his  changed  opinion.2  No  new  evidence  can  be 
introduced  before  a  master  after  he  has  made  his  draft 
report ; 3  the  proceedings  upon  exceptions  thereto,  being 
merely  in  the  nature  of  a  rehearing  for  errors  apparent  on 
the  face  of  the  record.  According  to  strict  equity  practice, 
it  is  necessary  to  give  a  master  this  opportunity  to  correct 
his  findings,  in  order  to  save  time  and  labor  of  the  judge.4 
But  this  strict  practice  has  often  been  omitted  by  counsel 
in  patent  cases,  and  its  omission  been  condoned  by  opposing 
counsel  or  by  the  court.5  But  it  is  not  safe  to  omit  the 
filing  of  such  exceptions  with  the  master,  for  the  rule  which 
requires  them,  is  always  liable  to  be  enforced,  and  the 
enforcement  consists  in  the  court  disregarding  every  excep- 
tion to  a  master's  final  report,  which  was  not  taken  before 
the  master  himself,  by  way  of  exceptions  to  his  draft  report.6 
A  final  report  of  a  master  is  merely  advisory  to  the  court ;  ~ 
and  though  its  conclusions  of  fact  will  not  be  reviewed 
otherwise  than  on  exceptions  thereto,8  its  conclusions  of 


1  Fischer  ®.  Hayes,  16  Fed.  Rep.  469,   1883;    Jennings  v.  Dolan,   29 
469,  1883.  Fed.  Rep.  861,  1887. 

2  Sugar  Refinery  Co.  v.  Mathies-  6  McMickin  v.  Perin,  18  Howard, 
son,  3  Cliff.  149,  1868;  Troy  Iron  &  510,  1855;  Troy  Iron  <fe  Nail  Factory 
Nail  Factory  v.  Corning,  6  Blatch.  v.  Corning,  6  Blatch.  333,  1869;  Cel- 
332. 1869.  luloid  Mfg.  Co.   v.  Cellonite  Mfg. 

»  Piper  v.  Brown,  1  Holmes,  196,  Co.  40  Fed.  Rep.  476,  1889. 

1873.  7  Boesch  v.  Graff,  133  U.  8.  705, 

4  Story  v,  Livingston.  13  Peters,  1890. 

366,  1839;  Topliff  v.  Topliff,  145  U.  8  Topliff  v.  Topliff,  145  U.  S.  172, 

8.  172. 1892.  1892. 

8  Fischer  v.  Hayes,  16  Fed.  Rep. 


564  PROFITS.  [CHAP.  XXII. 

law  will  be  verified  or  corrected  by  the  court,  before  any 
final  decree  is  based  thereon.1 

§  745.  Exceptions  to  masters'  reports  ought  to  be  aimed 
with  precision  at  the  errors  which  such  reports  are  alleged 
to  contain.2  Such  exceptions  may  be  filed  by  the  complain- 
ant, if  he  thinks  that  the  master  has  erred  in  not  finding  any 
profits,  or  in  not  finding  any  damages,  or  in  finding  either 
of  those  foundations  of  recovery  to  have  been  smaller  than 
the  evidence  would  warrant ;  and  such  exceptions  may  be 
filed  by  the  defendant,  if  he  thinks  that  the  master  erred  in 
finding  profits  or  in  finding  damages  to  an  amount  in  excess 
of  what  the  evidence  can  sustain. 

§  746.  Defendants'  exceptions  to  masters'  reports  are 
divisible  into  four  classes.  1.  Exceptions  which  state  that 
there  is  evidence  in  the  case,  proving  that  the  defendant 
derived  no  profit,  and  that  the  complainant  sustained  no 
damage,  on  account  of  the  infringement.  2.  Exceptions 
which  state  that  there  is  evidence  in  the  case  proving  that 
the  master's  finding  of  profits  or  of  damages,  is  too  large  in 
amount.  3.  Exceptions  which  deny  that  there  is  any  admis- 
sible evidence  in  the  case  proving  that  the  defendant  derived 
profit,  or  that  the  complainant  sustained  damage,  on  account 
of  the  infringement.  4.  Exceptions  which  deny  that  there 
is  any  admissible  evidence  in  the  case  proving  that  the 
defendant  derived  profit,  or  that  the  complainant  sustained 
damage,  on  account  of  the  infringement,  to  so  great  an 
amount  as  the  master  reported. 

The  first  two  of  these  classes  of  exceptions  rely  upon 
affirmations,  and  the  last  two  rely  upon  negations,  of  defi- 
nite points  of  fact.  For  the  purposes  of  the  present  explan- 
ation, the  four  classes  may  be  treated  in  two  groups  :  those 
which  are  affirmative  requiring  one  sort  of  management  in 
practice,  and  those  which  are  negative  requiring  another. 

§  747.  Defendants'  affirmative  exceptions  to  a  draft  report, 
must  specify  the  particular  evidence  upon  which  they  are 


1  Celluloid  Mfg.  Co.   v.   Cellonite  2  Sheffield  Ry.  Co.  ».  Gordon,  151 

Mfg.  Co.  40  Fed.  Rep.  477,  1889.  U.  S.  290,  1894. 


CKAP.  XXII.]  PROFITS.  565 

respectively  based.  If  this  rule  were  otherwise,  such  an 
exception  would  not  point  out  error,  and  would  therefore 
fail  to  perform  its  only  function.  Defendants'  affirmative 
exceptions  to  a  final  report,  must  be  supported  by  reference 
to  the  particular  evidence  upon  which  the  exceptor  relies  ; 
or  by  such  special  statements  of  the  master,  as  justify  the 
exceptor  in  affirming  the  existence  of  the  particular  facts 
upon  which  he  relies  to  support  such  exceptions.  Were 
the  court  required  to  wander  at  large  into  the  evidence 
which  was  before  the  master,  the  reference  to  him  would  be 
of  little  value.  Indeed  that  evidence  need  not  be  reported, 
further  than  it  is  relied  upon  to  support,  explain,  or  oppose 
a  particular  exception  ;  l  and  there  is  no  presumption  in  any 
case,  in  the  absence  of  a  certificate,  that  the  master  reported 
to  the  court  all  the  evidence  which  was  before  him.2 

§  748.  Defendants'  negative  exceptions  are  those  which 
call  in  question  the  admissibility  of  the  evidence  upon  which 
the  master  based  his  finding,  and  those  which  deny  the 
presence  in  the  record  of  any  evidence  sufficient  to  support 
that  conclusion.  An  exception  of  the  first  of  these  sorts, 
so  far  partakes  of  the  nature  of  an  affirmative  exception, 
that  it  ought  to  specify  the  particular  evidence  objected  to, 
so  that  the  master,  on  exceptions  to  his  draft  report,  or  the 
court,  on  exceptions  to  the  final  report  of  the  master,  may 
have  a  precise  issue  in  the  law  of  evidence  presented  for 
decision.  But  an  exception  of  the  second  of  these  kinds 
cannot  be  expected!  to  specify  any  particular  evidence, 
because  it  assumes  that  there  is  none  in  the  record.  In 
such  a  case,  the  proper  practice  is  for  the  exceptor  to 
require  the  master  to  make  a  special  statement,  in  his  final 
report,  of  the  particular  evidence  which  convinced  his  judg- 
ment, and  to  transmit  that  evidence  with  his  report  into 
court.3 


1  Harding  v.  Handy,  11  Wheaton,  8  Inre  Hemiup,  3  Paige  (N.  Y.), 
126,  1826.  307,  1832;  Greene  v.  Bishop,  1  Cliff. 

2  Sheffield  Ry.  Co.  v.  Gordon,  151  195,     1858;     The      Commander-in- 
U.  8.  293,  1894.  Chief,  1  Wallace,  50,  1863. 


566  PROFITS.  [CHAP.  xxn. 

§  749.  Complainant's  exceptions  to  a  master's  report  may 
be  of  two  classes.  1.  Exceptions  which  state  that  there  is 
evidence  in  the  case  proving  that  the  defendant  derived 
larger  profits,  or  that  the  complainant  sustained  larger 
damages  than  the  master  reported.  2.  Exceptions  which 
state  that  the  master  erred  in  admitting  inadmissible  evi- 
dence. Both  of  these  sorts  are  affirmative  in  their  nature, 
and  when  made  to  a  draft  report,  must  therefore  be  sup- 
ported by  references  to  the  particular  evidence  upon  which 
the  exceptor  relies,  or  by  reference  to  the  particular  evidence 
which  he  claims  was  improperly  admitted  against  his  objec- 
tion, as  the  case  may  happen  to  require.  When  made  to  a 
final  report,  a  complainant's  exceptions,  like  the  affirmative 
exceptions  of  a  defendant,  must  be  supported  either  by 
references  to  the  particular  evidence  involved,  or  be  based 
upon  such  special  statements  of  the  master  as  will  obviate 
that  necessity. 

§  750.  The  system  of  practice  relevant  to  a  master's  find- 
ing appears  to  present  the  following  outlines  when  reviewed 
as  a  whole.  It  is  a  master's  function  to  investigate  the 
questions  which  are  referred  to  him  by  the  court,  and  to 
investigate  no  others.  To  that  end,  he  takes  testimony  and 
receives  other  evidence,  and  decides  what  conclusions  are 
justified  thereby ;  and  those  conclusions  will  stand  unless 
they  are  clearly  erroneous.1  Unless  the  court  otherwise 
directs,  the  master's  draft  report  should  contain  those  con- 
clusions alone ;  and  his  final  report  should  contain  only  his 
final  conclusions,  together  with  such  statements  of  fact  and 
statements  and  pieces  of  evidence  as  the  parties  lawfully 
require  him  to  attach  thereto.  Where  the  exceptions  to  the 
draft  report  involve  no  issues  save  such  as  pertain  to  the 
admissibility  of  particular  evidence,  nothing  need  accom- 
pany the  final  report  except  the  evidence  objected  to,  and 
a  statement  of  the  ground  upon  which  it  was  admitted. 
Where  those  exceptions  merely  affirm  the  presence  of  evi- 


1  Tilghman  ®.  Proctor,  125  U.  S.       U.  S.  666,  1888;  Kimberly  v.  Arms, 
149,  1887;  Callaghan  ®.  Myers,  128      129  U.  S.  512,  1889. 


CHAP.  XXII.]  PROFITS.  567 

dence  requiring  a  different  conclusion  from  that  of  the 
master,  nothing  need  accompany  the  final  report  save  the 
particular  evidence  which  those  exceptions  specify  in  that 
behalf.  Where  those  exceptions  merely  deny  the  presence 
of  evidence  to  justify  the  draft  report,  nothing  need  accom- 
pany the  final  report  save  the  evidence  which  carried  the 
master  to  the  conclusion  at  which  he  arrived.  Where  a 
master  receives  no  direction  from  the  court,  and  no  request 
from  either  of  the  parties,  to  report  any  evidence  ;  his 
report  contains  nothing  but  his  finding,  and  his  finding  is 
conclusive.1 


1  Harding  v.  Handy,  11  Wheaton,  1851;    Howe  v.  Russell,  36  Maine, 

126,1826;  The  Commander-in-Chief ,  127,    1853:    Sparhawk  v.   Wills,   5 

1  Wallace,  50,  1863;  In  re  Hemiup,  Gray  (Mass.).  431,  1855;  Greene  v. 
3  Paige  (N.  Y.),  307,  1832;  Dexter  Bishop,  1  Cliff.  195,  1858;  Mason  v. 
v.   Arnold,   2    Sumner,    131,    1834;  Railroad  Co.  52  Maine,  115,  1861; 
Donnell  ».  Insurance  Co.  2  Sumner,  Piper  v.  Brown,  1  Holmes,  198, 1873; 
371,  1836;  Boston  Iron  Co.  v.  King,  Hammacher  v.  Wilson,  32  Fed.  Rep. 

2  Gushing  (Mass.),  405, 1848;  Adams  797,1887;  Keep  «.  Fuller,  42  Fed. 
f>.  Brown,  7  Cushing  (Mass.),  222,  Rep.  896.  1890. 


APPENDIX, 


THE   PATENT   STATUTES. 


PATENT    ACT    OF    1790. 

1  STATUTES  AT  LARGE,  109. 

An  Act  to  promote  the  progress  of  useful  Arts. 

SECTION  1 .  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled.  That  upon  the  petition  of  any  person  or  persons  to 
the  Secretary  of  State,  the  Secretary  for  the  Department  of 
"War.,  and  the  Attorney- General  of  the  United  States,  setting 
forth  that  he,  she,  or  they  hath  or  have  invented  or  discovered 
any  useful  art,  manufacture,  engine,  machine,  or  device,  or  any 
improvement  therein  not  before  known  or  used,  and  praying 
that  a  patent  may  be  granted  therefor,  it  shall  and  may  be 
lawful  to  and  for  the  said  Secretary  of  State,  the  Secretary  for 
the  Department  of  War,  and  the  Attorney- General,  or  any  two 
of  them,  if  they  shall  deem  the  invention  or  discovery  suffi- 
ciently useful  and  important,  to  cause  letters-patent  to  be  made 
out  in  the  name  of  the  United  States,  to  bear  teste  by  the  Pres- 
ident of  the  United  States,  reciting  the  allegations  and  sug- 
gestions of  the  said  petition,  and  describing  the  said  invention 
or  discovery,  clearly,  truly,  and  fully,  and  thereupon  granting 
to  such  petitioner  or  petitioners,  his,  her,  or  their  heirs,  ad- 
ministrators, or  assigns,  for  any  term  not  exceeding  fourteen 
years,  the  sole  and  exclusive  right  and  liberty  of  making, 
constructing,  using,  and  vending  to  others  to  be  used,  the  said 
invention  or  discovery  ;  which  letters -patent  shall  be  delivered 
to  the  Attorney-General  of  the  United  States  to  be  examined, 


572  THE    PATENT    STATUTES. 

who  shall,  within  fifteen  days  next  after  the  delivery  to  him,  if 
he  shall  find  the  same  conformable  to  this  act,  certify  it  to  be 
BO  at  the  foot  thereof,  and  present  the  letters-patent  so  certified 
to  the  President,  who  shall  cause  the  seal  of  the  United  States 
to  be  thereto  affixed,  and  the  same  shall  be  good  and  available 
to  the  grantee  or  grantees  by  force  of  this  act,  to  all  and 
every  intent  and  purpose  herein  contained,  and  shall  be  re- 
corded in  a  book  to  be  kept  for  that  purpose  in  the  office  of 
the  Secretary  of  State,  and  delivered  to  the  patentee  or  his 
agent,  and  the  delivery  thereof  shall  be  entered  on  the  record 
and  indorsed  on  the  patent  by  the  said  Secretary  at  the  time  of 
granting  the  same. 

SECTION  2.  And  be  it  further  enacted,  That  the  grantee  or 
grantees  of  each  patent  shall,  at  the  time  of  granting  the 
same,  deliver  to  the  Secretary  of  State  a  specification  in  writing, 
containing  a  description,  accompanied  with  drafts  or  models, 
and  explanations  and  models  (if  the  nature  of  the  invention  or 
discovery  will  admit  of  a  model),  of  the  thing  or  things  by  him 
or  them  invented  or  discovered,  and  described  as  aforesaid,  in 
the  said  patents  ;  which  specification  shall  be  so  particular, 
and  said  models  so  exact,  as  not  only  to  distinguish  the  inven- 
tion or  discovery  from  other  things  before  known  arid  used, 
but  also  to  enable  a  workman  or  other  person  skilled  in  the  art  of 
manufacture  j  whereof  it  is  a  branch,  or  wherewith  it  may  be 
nearest  connected,  to  make,  construct,  or  use  the  same,  to  the 
end  that  the  public  may  have  the  full  benefit  thereof,  after  the 
expiration  of  the  patent  term  ;  which  specifications  shall  be 
filed  in  the  office  of  the  said  Secretary,  and  certified  copies 
thereof  shall  be  competent  evidence  in  all  courts  and  before 
all  jurisdictions,  where  any  matter  or  thing,  touching  or  con- 
cerning such  patent,  right,  or  privilege  shall  come  in  question. 

SECTION  3.  And  be  it  further  enacted,  That  upon  the  ap- 
plication of  any  person  to  the  Secretary  of  State,  for  a  copy  of 
any  such  specification,  and  for  permission  to  have  similar  model 
or  models  made,  it  shall  be  the  duty  of  the  Secretary  to  give 
such  a  copy,  and  to  permit  the  person  so  applying  for  a  similar 
model  or  models,  to  take,  or  make,  or  cause  the  same  to  be  taken 
or  made,  at  the  expense  of  such  applicant. 


THE  PATENT  ACT  OF  1790.  573 

SECTION  4.  And  be  it  further  enacted,  That  if  any  person  or 
persons  shall  devise,  make,  construct,  use,  employ,  or  vend, 
within  these  United  States,  any  art,  manufacture,  engine, 
machine,  or  device,  or  any  invention  or  improvement  upon,  or 
in  any  art,  manufacture,  engine,  machine,  or  device,  the  sole 
and  exclusive  right  of  which  shall  be  so  as  aforesaid  granted 
by  patent  to  any  person  or  persons,  by  virtue  and  in  pursuance 
of  this  act,  without  the  consent  of  the  patentee  or  patentees, 
their  executors,  administrators,  or  assigns,  first  had  and  ob- 
tained in  writing,  every  person  so  offending  shall  forfeit  and 
pay  to  the  said  patentee  or  patentees,  his,  her,  or  their  execu- 
tors, administrators,  or  assigns,  such  damages  as  shall  be 
assessed  by  a  jury,  and  moreover  shall  forfeit  to  the  person  ag- 
grieved, the  thing  or  things  so  devised,  made,  constructed,  used, 
employed,  or  vended,  contrary  to  the  true  intent  of  this  act, 
which  may  be  recovered  in  an  action  on  the  case  founded  on 
this  act. 

SECTION  5.  And  be  it  further  enacted,  That  upon  oath  or 
affirmation  made  before  the  judge  of  the  district  court  where 
the  defendant  resides,  that  any  patent  which  shall  be  issued  in 
pursuance  of  this  act,  was  obtained  surreptitiously  by,  or  upon 
false  suggestion,  and  motion  made  to  the  said  court,  within  one 
year  after  issuing  the  said  patent,  but  not  afterwards,  it  shall 
and  may  be  lawful  to  and  for  the  judge  of  the  said  district, 
court,  if  the  matter  alleged  shall  appear  to  him  to  be  sufficient, 
to  grant  a  rule  that  the  patentee  or  patentees,  his,  her,  or  their 
executors,  administrators,  or  assigns,  show  cause  why  process 
should  not  issue  against  him,  her,  or  them,  to  repeal  such 
patents  ;  and  if  sufficient  cause  shall  not  be  shown  to  the  con- 
trary, the  rule  shall  be  made  absolute,  and  thereupon  the  said 
judge  shall  order  process  to  be  issued  as  aforesaid,  against  such 
patentee  or  patentees,  his,  her,  or  their  executors,  administra- 
tors, or  assigns.  And  in  case  no  sufficient  cause  shall  be  shown 
to  the  contrary,  or  if  it  shall  appear  that  the  patentee  was  not 
the  first  and  true  inventor  or  discoverer,  judgment  shall  be 
rendered  by  such  court  for  the  repeal  of  such  patent  or  patents  ; 
and  if  the  party  at  whose  complaint  the  process  issued  shall 
have  judgment  given  against  him,  he  shall  pay  all  such  costs 


574  THE    PATENT    STATUTES. 

as  the  defendant  shall  be  put  to  in  defending  the  suit,  to  be 
taxed  by  the  court,  and  recovered  in  such  manner  as  costs  ex- 
pended by  defendants  shall  be  recovered  in  due  course  of  law. 

SECTION  6.  And  be  it  further  enacted.  That  in  all  actions  to 
be  brought  by  such  patentee  or  patentees,  his,  her,  or  their  ex- 
ecutors, administrators,  or  assigns,  for  any  penalty  incurred  by 
virtue  of  this  act,  the  said  patents  or  specifications  shall  be 
primd  facie  evidence  that  the  said  patentee  or  patentees  was 
or  were  the  first  and  true  inventor  or  inventors,  discoverer  or 
discoverers,  of  the  things  so  specified,  and  that  the  same  is  truly 
specified  ;  but  that  nevertheless  the  defendant  or  defendants 
may  plead  the  general  issue,  and  give  this  act,  and  any  special 
matter  whereof  notice  in  writing  shall  have  been  given  to  the 
plaintiff,  or  his  attorney,  thirty  days  before  the  trial,  in  evi- 
dence tending  to  prove  that  the  specification  filed  by  the 
plaintiff  does  not  contain  the  whole  of  the  truth  concerning  his 
invention  or  discovery  ;  or  that  it  contains  more  than  is  neces-  ' 
sary  to  produce  the  effect  described  ;  and  if  the  concealment 
of  part,  or  the  addition  of  more  than  is  necessary,  shall  appear 
to  have  been  intended  to  mislead,  or  shall  actually  mislead  the 
public,  so  as  the  effect  described  cannot  be  produced  by  the 
means  specified,  then,  and  in  such  cases,  the  verdict  and  judg- 
ment shall  be  for  the  defendant. 

SECTION  7.  And  be  it  further  enacted,  That  such  patentee 
as  aforesaid  shall,  before  he  receives  his  patent,  pay  the  fol- 
lowing fees  to  the  several  officers  employed  in  making  out 
and  perfecting  the  same,  to  wit :  For  receiving  and  filing  the 
petition,  fifty  cents  ;  for  filing  specifications,  per  copy-sheet 
containing  one  hundred  words,  ten  cents  ;  for  making  out 
patent,  two  dollars  ;  for  affixing  great  seal,  one  dollar  ;  for 
indorsing  the  day  of  delivering  the  same  to  the  patentee,  in- 
cluding all  intermediate  services,  twenty  cents. 

APPROVED  April  10,  1790. 

Repealed  February  21,  1793,  1  Statutes  at  Large,  Chap. 
11,  Section  12,  p.  323. 


PATENT   ACT   OF   1793. 
1  STATUTES  AT  LARGE,  318. 

An  Act  to  promote  the  progress  of  useful  Arts  ;  and  to  repeal 
the  act  heretofore  made  for  that  purpose. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  when  any  person  or  persons,  being  a  citizen  or 
citizens  of  the  United  States,  shall  allege  that  he  or  they  have 
invented  any  new  and  useful  art,  machine,  manufacture,  or 
composition  of  matter,  or  any  new  and  useful  improvement  on 
any  art,  machine,  manufacture,  or  composition  of  matter,  not 
known  or  used  before  the  application,  and  shall  present  a  peti- 
tion to  the  Secretary  of  State,  signifying  a  desire  of  obtaining 
an  exclusive  property  in  the  same,  and  praying  that  a  patent 
may  be  granted  therefor,  it  shall  and  may  be  lawful  for  the 
said  Secretary  of  State  to  cause  letters-patent  to  be  made  out 
in  the  name  of  the  United  States,  bearing  teste  by  the  Presi- 
dent of  the  United  States,  reciting  the  allegations  and  sugges- 
tions of  the  said  petition,  and  giving  a  short  description  of  the 
said  invention  or  discovery,  and  thereupon  granting  to  such 
petitioner  or  petitioners,  his,  her,  or  their  heirs,  administrators, 
or  assigns,  for  a  term  not  exceeding  fourteen  years,  the  full 
and  exclusive  right  and  liberty  of  making,  constructing,  using, 
and  vending  to  others  to  be  used,  the  said  invention  or  discovery, 
which  letters-patent  shall  be  delivered  to  the  Attorney-General 
of  the  United  States,  to  be  examined  ;  who,  within  fifteen  days 
after  such  delivery,  if  he  finds  the  same  conformable  to  this 
act,  shall  certify  accordingly,  at  the  foot  thereof,  and  return 
the  same  to  the  Secretary  of  State,  who  shall  present  the  letters- 
patent,  thus  certified,  to  be  signed,  and  shall  cause  the  seal  of 
the  United  States  to  be  thereto  affixed  ;  and  the  same  shall  be 
good  and  available  to  the  grantee  or  grantees,  by  force  of  this 
act,  and  shall  be  recorded  in  a  book,  to  be  kept  for  that  pur- 
pose, in  the  office  of  the  Secretary  of  State,  and  delivered 
to  the  patentee  or  his  order. 

SECTION  2.  Provided  always,  and  be  it  further  enacted,  That 
any  person  who  shall  have  discovered  an  improvement  in  the 


576  THE    PATENT    STATUTES. 

principle  of  any  machine,  or  in  the  process  of  any  composition 
of  matter,  which  shall  have  been  patented,  and  shall  have  ob- 
tained a  patent  for  such  improvement,  he  shall  not  be  at  liberty 
to  make,  use,  or  vend  the  original  discovery,  nor  shall  the  first 
inventor  be  at  liberty  to  use  the  improvement  :  And  it  is  here- 
by enacted  and  declared,  that  simply  changing  the  form  or  the 
proportions  of  any  machine,  or  composition  of  matter,  in  any 
degree,  shall  not  be  deemed  a  discovery. 

SECTION  3.  And  be  it  further  enacted.  That  every  inventor, 
before  he  can  receive  a  patent,  shall  swear  or  affirm,  that  he 
does  verily  believe  that  he  is  the  true  inventor  or  discoverer 
of  the  art,  machine,  or  improvement  for  which  he  solicits  a 
patent,  which  oath  or  affirmation  may  be  made  before  any  per- 
son authorized  to  administer  oaths,  and  shall  deliver  a  written 
description  of  his  invention,  and  of  the  manner  of  using,  or 
process  of  compounding  the  same,  in  such  full,  clear,  and  ex- 
act terms,  as  to  distinguish  the  same  from  all  other  things 
before  known,  and  to  enable  any  person  skilled  in  the  art  or 
science  of  which  it  is  a  branch,  or  with  which  it  is  most  nearly 
connected,  to  make,  compound,  and  use  the  same.  And  in  the 
case  of  any  machine,  he  shall  fully  explain  the  principle,  and  the 
several  modes  in  which  he  has  contemplated  the  application  of 
that  principle  or  character,  by  which  it  may  be  distinguished 
from  other  inventions  ;  and  he  shall  accompany  the  whole  with 
drawings  and  written  references,  where  the  nature  of  the  case 
admits  of  drawings,  or  with  specimens  of  the  ingredients,  and 
of  the  composition  of  matter,  sufficient  in  quantity  for  the  pur- 
pose of  experiment,  where  the  invention  is  of  a  composition  of 
matter  ;  which  description,  signed  by  himself,  and  attested  by 
two  witnesses,  shall  be  filed  in  the  office  of  the  Secretary  of 
State,  and  certified  copies  thereof  shall  be  competent  evidence 
in  all  courts,  where  any  matter  or  thing,  touching  such  patent 
right  shall  come  in  question.  And  such  inventor  shall,  more- 
over, deliver  a  model  of  his  machine,  provided  the  Secretary 
shall  deem  such  model  to  be  necessary. 

SECTION  4.  And  be  it  further  enacted,  That  it  shall  be  law- 
ful for  any  inventor,  his  executor  or  administrator,  to  assign 
the  title  and  interest  in  the  said  invention,  at  any  time,  and 


THE  PATENT  ACT  OF  1793.  577 

the  assignee,  having  recorded  the  said  assignmer-  fa  the  office 
of  the  Secretary  of  State,  shall  thereafter  stanc1  .n  the  place  of 
the  original  inventor,  both  as  to  right  and  responsibility,  and 
so  the  assignees  of  assigns,  to  any  degree. 

SECTION  5.  And  be  it  further  enacted,  That  if  any  person 
shall  hiake,  devise,  and  use,  or  sell  the  thing  so  invented,  the 
exclusive  right  of  which  shall,  as  aforesaid,  have  been  secured 
k>  any  person  by  patent,  without  the  consent  of  the  patentee, 
his  executors,  administrators,  or  assigns,  first  obtained  in  writ- 
ing, every  person  so  offending  shall  forfeit  and  pay  to  the  pat- 
entee a  sum  that  shall  be  at  least  equal  to  three  times  the  price 
for  which  the  patentee  has  usually  sold  or  licensed,  to  other 
persons,  the  use  of  the  said  invention,  which  may  be  recovered 
in  an  action  on  the  case  founded  on  this  act,  in  the  circuit 
court  of  the  United  States,  or  any  other  court  having  compe- 
tent jurisdiction. 

SECTION  6.  Provided  always,  and  be  it  further  enacted, 
That  the  defendant  in  such  action  shall  be  permitted  to  plead 
the  general  issue,  and  give  this  act,  and  any  special  matter,  of 
which  notice  in  writing  may  have  been  given  to  the  plaintiff 
or  his  attorney,  thirty  days  before  trial,  in  evidence,  tending 
to  prove  that  the  specification  filed  by  the  plaintiff  does  not 
contain  the  whole  truth  relative  to  his  discovery,  or  that  it 
contains  more  than  is  necessary  to  produce  the  described  effect, 
which  concealment  or  addition  shall  fully  appear  to  have  been 
made  for  the  purpose  of  deceiving  the  public,  or  that  the  thing 
thus  secured  by  patent  was  not  originally  discovered  by  the 
patentee,  but  had  been  in  use,  or  had  been  described  in  some 
public  work  anterior  to  the  supposed  discovery  of  the  patentee, 
or  that  he  had  surreptitiously  obtained  a  patent  for  the  discov- 
ery of  another  person  ;  in  either  of  which  cases  judgment  shall 
be  rendered  for  the  defendant,  with  costs,  and  the  patent  shall 
be  declared  void. 

SECTION  7.  And  be  it  further  enacted,  That  where  any 
State,  before  its  adoption  of  the  present  form  of  government, 
shall  have  granted  an  exclusive  right  to  any  invention,  the 
party  claiming  that  right  shall  not  be  capable  of  obtaining  an 
exclusive  right  under  this  act,  but  on  relinquishing  his  right 


578  THE    PATENT    STATUTES. 

under  such  particular  State,  and  of  such  relinquishment,  his 
obtaining  an  exclusive  right  under  this  act  shall  be  sufficient 
evidence. 

SECTION  8.  And  be  it  further  enacted,  That  the  persons 
whose  applications  for  patents  were,  at  the  time  of  passing  this 
act,  depending  before  the  Secretary  of  State,  Secretary  at  War, 
and  Attorney-General,  according  to  the  act  passed  the  second 
session  of  the  first  Congress,  entituled  "  An  act  to  promote  the 
progress  of  useful  arts,"  on  complying  with  the  conditions  of 
this  act,  and  paying  the  fees  herein  required,  may  pursue  their 
respective  claims  to  a  patent  under  the  same. 

SECTION  9.  And  be  it  further  enacted,  That  in  case  of  inter- 
fering applications,  the  same  shall  be  submitted  to  the  arbitra- 
tion of  three  persons,  one  of  whom  shall  be  chosen  by  each  of 
the  applicants,  and  the  third  person  shall  be  appointed  by  the 
Secretary  of  State  ;  and  the  decision  or  award  of  such  arbitra- 
tors, delivered  to  the  Secretary  of  State  in  writing,  and  sub- 
scribed by  them,  or  any  two  of  them,  shall  be  final,  as  far  as 
respects  the  granting  of  the  patent.  And  if  either  of  the  ap- 
plicants shall  refuse  or  fail  to  chuse  an  arbitrator,  the  patent 
shall  issue  to  the  opposite  party.  And  where  there  shall  be 
more  than  two  interfering  applications,  and  the  parties  apply- 
ing shall  not  all  unite  in  appointing  three  arbitrators,  it  shall 
be  in  the  power  of  the  Secretary  of  State  to  appoint  three  ar- 
bitrators for  the  purpose. 

SECTION  10.  And  be  it  further  enacted,  That  upon  oath  or 
affirmation  being  made  before  the  judge  of.  the  district  court 
where  the  patentee,  his  executors,  administrators,  or  assigns, 
reside,  that  any  patent,  which  shall  be  issued  in  pursuance  of 
this  act,  was  obtained  surreptitiously,  or  upon  false  suggestion, 
and  motion  made  to  the  said  court,  within  three  years  after  is- 
suing the  said  patent,  but  not  afterward,  it  shall  and  may 
be  lawful  for  the  judge  of  the  said  district  court,  if  the  mat- 
ter alleged  shall  appear  to  him  to  be  sufficient,  to  grant  a  rule, 
that  the  patentee,  or  his  executor,  administrator,  or  assign  show 
cause  why  process  should  not  issue  against  him  to  repeal  such 
patent.  And  if  sufficient  cause  shall  not  be  shown  to  the  con- 


THE  PATENT  ACT  OF  1793.  579 

trary,  the  rule  shall  be  made  absolute,  and  thereupon  the  eaid 
judge  shall  order  process  to  be  issued  against  such  patentee,  or 
his  executors,  administrators,  or  assigns,  with  costs  of  suit. 
And  in  case  no  sufficient  cause  shall  be  shown  to  the  contrary, 
or  if  it  shall  appear  that  the  patentee  was  not  the  true  inventor 
or  discoverer,  judgment  shall  be  rendered  by  such  court  for 
the  repeal  of  such  patent  ;  and  if  the  party,  at  whose  complaint 
the  process  issued,  shall  have  judgment  given  against  him,  he 
shall  pay  all  such  costs  as  the  defendant  shall  be  put  to  in  de- 
fending the  suit,  to  be  taxed  by  the  court,  and  recovered  in  due 
course  of  law. 

SECTION  11.  And  be  it  further  enacted,  That  every  inventor, 
before  he  presents  his  petition  to  the  Secretary  of  State,  signi- 
fying his  desire  of  obtaining  a  patent,  shall  pay  into  the  treas- 
ury thirty  dollars,  for  which  he  shall  take  duplicate  receipts  ;  one 
of  which  receipts  he  shall  deliver  to  the  Secretary  of  State, 
when  he  presents  his  petition  ;  and  the  money  thus  paid  shall 
be  in  full  for  the  sundry  services  to  be  performed  in  the  office 
of  the  Secretary  of  State,  consequent  on  such  petition,  and 
shall  pass  to  the  account  of  clerk-hire  in  that  office  :  Provided 
nevertheless,  That  for  every  copy,  which  may  be  required  at 
the  said  office,  of  any  paper  respecting  any  patent  that  has 
been  granted,  the  person  obtaining  such  copy  shall  pay,  at  the 
rate  of  twenty  cents,  for  every  copy-sheet  of  one  hundred 
words,  and  for  every  copy  of  a  drawing,  the  party  obtaining 
the  same,  shall  pay  two  dollars,  of  which  payments  an  account 
shall  be  rendered,  annually,  to  the  treasury  of  th,e  United 
States,  and  they  shall  also  pass  to  the  account  of  clerk-hire  in 
the  office  of  the  Secretary  of  State. 

SECTION  12.  And  be  it  further  enacted,  That  the  act  passed 
the  tenth  day  of  April,  in  the  year  one  thousand  seven  hun- 
dred and  ninety,  intituled  "  An  act  to  promote 'the  progress 
of  useful  arts,' '  be,  and  the  same  is  hereby,  repealed  :  Provided 
always,  That  nothing  contained  in  this  act  shall  be  construed 
to  invalidate  any  patent  that  may  have  been  granted  under  the 
authority  of  the  said  act ;  and  all  patentees  under  the  said  act, 
their  executors,  administrators,  and  assigns,  shall  be  considered 


580  THE   PATENT   STATUTES. 

within  the  purview  of  this  act,  in  respect  to  the  violation  of 
their  rights  :  provided  such  violations  shall  be  committed  after 
the  passing  of  this  act. 

APPROVED  February  21,  1793. 

Eepealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 


PATENT   ACT    OF   1794. 
1  STATUTES  AT  LARGE,  393. 

An  Act  supplementary  to  the  act  intituled  "  An  act  to  pro- 
mote the  progress  of  Useful  Arts. ' ' 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
all  suits,  actions,  process  and  proceedings,  heretofore  had  in 
any  District  Court  of  the  United  States,  under  an  act  passed 
the  tenth  day  of  April,  in  the  year  one  thousand  seven  hun- 
dred and  ninety,  intituled  "An  act  to  promote  the  progress 
of  useful  arts,"  which  may  have  been  set  aside,  suspended  or 
abated,  by  reason  of  the  repeal  of  the  said  act,  may  be  restored, 
at  the  instance  of  the  plaintiff  or  defendant,  within  one  year 
from  and  after  the  passing  of  this  act,  in  the  said  court,  to  the 
same  situation,  in  which  they  may  have  been  when  they  were  so 
set  aside,  suspended,  or  abated  ;  and  that  the  parties  to  the  said 
suits,  actions,  process  or  proceedings  be,  and  are  hereby,  entitled 
to  proceed  in  such  cases,  as  if  no  such  repeal  of  the  act  afore- 
said had  taken  place  :  Provided  always.  That  before  any 
order  or  proceeding,  other  than  that  for  continuing  the  same 
suits,  after  the  reinstating  thereof,  shall  be  entered  or  had, 
the  defendant  or  plaintiff,  as  the  case  may  be,  against  whom 
the  same  may  have  been  reinstated,  shall  be  brought  into  court 
by  summons,  attachment,  or  such  other  proceeding  as  is  used 
in  other  cases  for  compelling  the  appearance  of  a  party. 

APPROVED  June  7,  1794. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357,  Sec- 
tion 21,  p.  125. 


PATENT  ACT  OF  1800. 
2  STATUTES  AT  LARGE,  37. 

An  Act  to  extend  the  privilege  of  obtaining  patents  for  useful 
discoveries  and  inventions,  to  certain  persons  therein  men- 
tioned, and  to  enlarge  and  define  the  penalties  for  vio- 
lating  the  rights  of  patentees. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled, That  all  and  singular  the  rights  and  privileges  given,  in- 
tended or  provided  to  citizens  of  the  United  States,  respecting 
patents  for  new  inventions,  discoveries,  and  improvements,  by 
the  act  intituled  "  An  act  to  promote  the  progress  of  useful 
arts,  and  to  repeal  the  act  heretofore  made  for  that  purpose,'  * 
shall  be,  and  hereby  are,  extended  and  given  to  all  aliens  who 
at  the  time  of  petitioning  in  the  manner  prescribed  by  the 
said  act,  shall  have  resided  for  two  years  within  the  United 
States,  which  privileges  shall  be  obtained,  used,  and  enjoyed 
by  such  persons,  in  as  full  and  ample  manner,  and  under  the 
same  conditions,  limitations,  and  restrictions,  as  by  the  said 
act  is  provided  and  directed  in  the  case  of  citizens  of  the 
United  States  :  Provided  always,  That  every  person  petition- 
trig  for  a  patent  for  any  invention,  art,  or  discovery,  pursuant 
to  this  act,  shall  make  oath  or  affirmation  before  some  person 
duly  authorized  to  administer  oaths  before  such  patent  shall  be 
granted,  that  such  invention,  art,  or  discovery  hath  not,  to  the 
best  of  his  or  her  knowledge  or  belief,  been  known  or  used 
either  in  this  or  any  foreign  country,  and  that  every  patent 
which  shall  be  obtained  pursuant  to  this  act,  for  any  invention, 
art,  or  discovery,  which  it  shall  afterwards  appear  had  been 
known  or  used  previous  to  such  application  for  a  patent,  shall 
be  utterly  void. 

SECTION  2.  And  be  it  further  enacted,  That  where  any  per- 
son hath  made,  or  shall  have  made,  any  new  invention, 
discovery,  or  improvement,  on  account  of  which  a  patent 
might,  by  virtue  of  this  or  the  above-mentioned  act,  be 
granted  to  such  person,  and  shall  die  before  any  patent  shall  be 
granted  therefor,  the  right  of  applying  for  and  obtaining  such 


582  THE   PATENT   STATUTES. 

patent,  shall  devolve  on  the  legal  representatives  of  such  per- 
son in  trust  for  the  heirs  at  law  of  the  deceased,  in  case  he  shall 
have  died  intestate  ;  but  if  otherwise,  then  in  trust  for  his 
devisees,  in  as  full  and  ample  manner,  and  under  the  same 
conditions,  limitations,  and  restrictions  as  the  same  was  held, 
or  might  have  been  claimed  or  enjoyed  by  such  person,  in  his 
or  her  lifetime  ;  and  when  application  for  a  patent  shall  be 
made  by  such  legal  representatives,  the  oath  or  affirmation, 
provided  in  the  third  section  of  the  before-mentioned  act,  shall 
be  so  varied  as  to  be  applicable  to  them. 

SECTION  3.  And  be  it  further  enacted,  That  where  any- 
patent  shall  be  or  shall  have  been  granted  pursuant  to  this  or 
the  above-mentioned  act,  and  any  person  without  the  consent 
of  the  patentee,  his  or  her  executors,  administrators,  or  assigns, 
first  obtained  in  writing,  shall  make,  devise,  use,  or  sell  the 
thing  whereof  the  exclusive  right  is  secured  to  the  said  patentee 
by  such  patent,  such  person  so  offending  shall  forfeit  and  pay 
to  the  said  patentee,  his  executors,  administrators,  or  assigns, 
a  sum  equal  to  three  times  the  actual  damage  sustained  by  such 
patentee,  his  executors,  administrators,  or  assigns,  from  or  by 
reason  of  such  offence,  which  sum  shall  and  may  be  recovered 
by  action  on  the  case  founded  on  this  and  the  above-mentioned 
act,  in  the  circuit  court  of  the  United  States,  having  jurisdic- 
tion thereon. 

SECTION  4.  And  be  it  further  enacted,  That  the  fifth  section 
of  the  above-mentioned  act,  intituled  "  An  act  to  promote 
the  progress  of  useful  arts,  and  to  repeal  the  act  heretofore 
made  for  that  purpose, ' '  shall  be,  and  hereby  is,  repealed. 

APPROVED  April  17,  1800. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT  ACT  OF  1819. 
3  STATUTES  AT  LARGE,  481. 

An  Act  to  extend  the  jurisdiction  of  the  circuit  courts  of  the 
United  States  to  cases  arising  under  the  law  relating  to 
patents. 


THE  PATENT  ACT  OF  1819.  583 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled.  That 
the  circuit  courts  of  the  United  States  shall  have  original 
cognizance,  as  well  in  equity  as  at  law,  of  all  actions,  suits, 
controversies,  and  cases  arising  under  any  law  of  the  United 
States,  granting  or  confirming  to  authors  or  inventors  the  ex- 
clusive right  to  their  respective  writings,  inventions,  and  dis- 
coveries ;  and  upon  any  bill  in  equity,  filed  by  any  party 
aggrieved  in  any  such  cases,  shall  have  authority  to  grant  in- 
junctions, according  to  the  course  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  the  rights  of  any  authors  or 
inventors,  secured  to  them  by  any  laws  of  the  United  States, 
on  such  terms  and  conditions  as  the  said  courts  may  deem  fit 
and  reasonable  :  Provided  however,  That  from  all  judgments 
and  decrees  of  any  circuit  courts  rendered  in  the  premises,  a 
writ  of  error  or  appeal,  as  the  case  may  require,  shall  lie  to  the 
Supreme  Court  of  the  United  States,  in  the  same  manner,  and 
under  the  same  circumstances,  as  4s  now  provided  by  law  in 
other  judgments  and  decrees  of  such  circuit  courts. 

APPROVED  February  15,  1819. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT   ACT   OF   JULY   3,  1832. 

4  STATUTES  AT  LARGE,'  559. 

An  Act  concerning  patents  for  useful  inventions. 
SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled, That  it  shall  be  the  duty  of  the  Secretary  of  State, 
annually,  in  the  month  of  January,  to  report  to  Congress,  and 
to  publish  in  two  of  the  newspapers  printed  in  the  city  of 
Washington,  a  list  of  all  the  patents  for  discoveries,  inventions, 
and  improvements,  which  shall  have  expired  within  the  year 
immediately  preceding,  with  the  names  of  the  patentees,  alpha- 
betically arranged. 

SECTION  2.  And  be  it  further  enacted,  That  application  to 
Congress  to  prolong  or  renew  the  term  of  a  patent  shall  be  made 


584  THE   PATENT    STATUTES. 

before  its  expiration,  and  shall  be  notified  at  least  once  a  month, 
for  three  months  before  its  presentation,  in  two  newspapers 
printed  in  the  city  of  Washington,  and  in  one  of  the  news- 
papers in  which  the  laws  of  the  United  States  shall  be  published 
in  the  State  or  Territory  in  which  the  patentee  shall  reside. 
The  petition  shall  set  forth  particularly  the  grounds  of  the  ap- 
plication. It  shall  be  verified  by  oath  ;  the  evidence  in  its 
support  may  be  taken  before  any  judge  or  justice  of  the  peace  ; 
it  shall  be  accompanied  by  a  statement  of  the  ascertained  value 
of  the  discovery,  invention,  or  improvement,  and  of  the  receipts 
and  expenditures  of  the  patentee,  so  as  to  exhibit  the  profit  or 
loss  arising  therefrom. 

SECTION  3.  And  be  it  further  enacted.  That  wherever  any 
patent  which  has  been  heretofore,  or  shall  be  hereafter,  granted 
to  any  inventor  in  pursuance  of  the  act  of  Congress,  entitled 
"  An  act  to  promote  the  progress  of  useful  arts,  and  to  repeal 
the  act  heretofore  made  for  that  purpose,"  passed  on  the 
twenty-first  day  of  February,  in  the  year  of  our  Lord,  one 
thousand  seven  hundred  and  ninetv- three,  or  of  any  of  the  acts 
supplementary  thereto,  shall  be  invalid  or  inoperative,  by  reason 
that  any  of  the  terms  or  conditions  prescribed  in  the  third  section 
of  the  said  first-mentioned  act,  have  not,  by  inadvertence,  acci- 
dent, or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, been  complied  with  on  the  part  of  the  said  inventor,  it  shall 
be  lawful  for  the  Secretary  of  State,  upon  the  surrender  to  him 
of  such  patent,  to  cause  a  new  patent  to  be  granted  to  the  said 
inventor  for  the  same  invention  for  the  residue  of  the  period 
then  un expired,  for  which  the  original  patent  was  granted,  upon 
his  compliance  with  the  terms  and  conditions  prescribed  in  the 
said  third  section  of  the  said  act.  And,  in  case  of  his  death, 
or  any  assignment  by  him  made  of  the  same  patent,  the  like 
right  shall  vest  in  his  executors  and  administrators,  or  assignee 
or  assignees  :  Provided  however,  That  such  new  patent  so 
granted  shall,  in  all  respects,  be  liable  to  the  same  matters  of 
objection  and  defence  as  any  original  patent  granted  under  the 
said  first-mentioned  act.  But  no  public  use  or  privilege  of  the 
invention  so  patented,  derived  from  or  after  the  grant  of  the 
original  patent,  either  under  any  special  license  of  the  inventor, 


THE  PATENT  ACT  OF  1832.  585 

or  without  the  consent  of  the  patentee  that  there  shall  be  a 
free  public  use  thereof,  shall,  in  any  manner,  prejudice  his 
right  of  recovery  for  any  use  or  violation  of  his  invention  after 
the  grant  of  such  new  patent  as  aforesaid. 

APPROVED  July  3,  1832. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 


PATENT   ACT  OF  JULY  13,   1832. 
4  STATUTES  AT  LARGE,  577. 

An  Act  concerning  the  issuing  of  patents  to  aliens,  for  useful 
discoveries  and  inventions. 

Be  it  enacted  ty  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  the 
privileges  granted  to  the  aliens  described  in  the  first  section  of 
the  act,  to  extend  the  privilege  of  obtaining  patents  for  useful 
discoveries  and  inventions  to  certain  persons  therein  mentioned, 
and  to  enlarge  and  define  the  penalties  for  violating-the  rights 
of  patentees,  approved  April  seventeenth,  eighteen  hundred, 
be  extended  in  like  manner  to  every  alien  who,  at  the  time  of 
petitioning  for  a  patent,  shall  be  resident  in  the  United  States, 
and  shall  have  declared  his  intention,  according  to  law,  to  be- 
come a  citizen  thereof  :  Provided,  That  every  patent  granted 
by  virtue  of  this  act  and  the  privileges  thereto  appertaining, 
shall  cease  and  determine  and  become  absolutely  void  without 
resort  to  any  legal  process  to  annul  or  cancel  the  same  in  case 
of  a  failure  on  the  part  of  any  patentee,  for  the  space  of  one  year 
from  the  issuing  thereof,  to  introduce  into  public  use  in  the 
United  States  the  invention  or  improvement  for  which  the 
patent  shall  be  issued  ;  or  in  case  the  same  for  any  period  of 
six  months  after  such  introduction  shall  not  continue  to  be 
publicly  used  and  applied  in  the  United  States,  or  in  case  of 
failure  to  become  a  citizen  of  the  United  States,  agreeably  to 
notice  given  at  the  earliest  period  within  which  he  shall  be  en- 
titled to  become  a  citizen  of  the  United  States. 

APPROVED  July  13,  1832. 


586  THE    PATENT    STATUTES. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT   ACT   OF    1836. 

5  STATUTES  AT  LARGE,  117. 

An  Act  to  promote  the  progress  of   the  useful  arts,  and  to 

repeal  all  acts  and  parts  of  acts  heretofore  made  for  that 

purpose. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled, That  there  shall  be  established  and  attached  to  the  De- 
partment of  State  an  office  to  be  denominated  the  Patent  Office  ; 
the  chief  officer  of  which  shall  be  called  the  Commissioner  of 
Patents,  to  be  appointed  by  the  President,  by  and  with  the 
advice  and  consent  of  the  Senate,  whose  duty  it  shall  be,  under 
the  direction  of  the  Secretary  of  State,  to  superintend,  execute, 
and  perform  all  such  acts  and  things  touching  and  respecting 
the  granting  and  issuing  of  patents  for  new  and  useful  dis- 
coveries, inventions,  and  improvements,  as  are  herein  provided 
for,  or  shall  hereafter  be,  by  law,  directed  to  be  done  and  per- 
formed, and  shall  have  the  charge  and  custody  of  all  the  books, 
records,  papers,  models,  machines,  and  all  other  things  belong- 
ing to  said  office.  And  said  Commissioner  shall  receive  the  same 
compensation  as  is  allowed  by  law  to  the  Commissioner  of  the 
Indian  Department,  and  shall  be  entitled  to  send  and  receive 
letters  and  packages  by  mail,  relating  to  the  business  of  the 
office,  free  of  postage. 

SECTION  2.  And  be  it  further  enacted,  That  there  shall  be  in 
said  office  an  inferior  officer,  to  be  appointed  by  the  said  princi- 
pal officer,  with  the  approval  of  the  Secretary  of  State,  to  re- 
ceive an  annual  salary  of  seventeen  hundred  dollars,  and 
to  be  called  the  Chief  Clerk  of  the  Patent  Office  ;  who  in  all 
cases  during  the  necessary  absence  of  the  Commissioner,  or 
when  then  said  principial  office  shall  become  vacant,  shall  have 
the  charge  and  custody  of  the  seal,  and  of  the  records,  books, 
papers,  machines,  models,  and  all  other  things  belonging  to 
the  said  office,  and  shall  perform  the  duties  of  Commissioner 


THE  PATENT  ACT  OF  1836.  587 

during  such  vacancy.  And  the  said  Commissioner  may  also, 
with  like  approval,  appoint  an  examining  clerk,  at  an  annual 
salary  of  fifteen  hundred  dollars  ;  two  other  clerks  at  twelve 
hundred  dollars  each,  one  of  whom  shall  be  a  competent 
draughtsman  ;  one  other  clerk  at  one  thousand  dollars ;  a 
machinist  at  twelve  hundred  and  fifty  dollars  ;  and  a  messen- 
ger at  seven  hundred  dollars.  And  said  Commissioner,  clerks, 
and  every  other  person  appointed  and  employed  in  said  office, 
shall  be  disqualified  arid  interdicted  from  acquiring  or  taking, 
except  by  inheritance,  during  the  period  for  which  they  shall 
hold  their  appointments,  respectively,  any  right  or  interest, 
directly  or  indirectly,  in  any  patent  for  an  invention  or  discovery 
which  has  been,  or  may  hereafter  be  granted. 

SECTION  3.  Andbe  it  further  enacted.  That  the  said  principal 
officer,  and  every  other  person  to  be  appointed  in  the  said 
office,  shall,  before  he  enters  upon  the  duties  of  his  office  or 
appointment,  make  oath  or  affirmation  truly  and  faithfully  to 
execute  the  trust  committed  to  him.  And  the  said  Commis- 
sioner and  the  chief  clerk  shall  also,  before  entering  upon  their 
duties,  severally  give  bonds,  with  sureties,  to  the  Treasurer  of 
the  United  States,  the  former  in  the  sum  of  ten  thousand 
dollars,  and  the  latter  in  the  sum  of  five  thousand  dollars,  with 
condition  to  render  a  true  and  faithful  account  to  him  or  his 
successor  in  office,  quarterly,  of  all  moneys  which  shall  be  by 
them  respectively  received  for  duties  on  patents,  and  for  copies 
of  records  and  drawings,  and  all  other  moneys  received  by 
virtue  of  said  office. 

SECTION  4.  And  be  it  further  enacted,  That  the  said  Commis- 
sioner shall  cause  a  seal  to  be  made  and  provided  for  the  said 
office,  with  such  device  as  the  President  of  the  United  States 
shall  approve  ;  and  copies  of  any  records,  books,  papers,  or 
drawings  belonging  to  the  said  office,  under  the  signature  of 
the  said  Commissioner,  or,  when  the  office  shall  be  vacant  under 
the  signature  of  the  chief  clerk,  with  the  said  seal  affixed,  shall 
be  competent  evidence  in  all  cases  in  which  the  original  records, 
books,  papers,  or  drawings  could  be  evidence.  And  any  person 
making  application  therefor  may  have  certified  copies  of  the 
records,  drawings,  and  other  papers  deposited  in  said  office,1  on 


588  THE    PATENT    STATUTES. 

paying  for  the  written  copies  the  sum  of  ten  cents  for  every 
page  of  one  hundred  words  ;  and  for  copies  of  drawings  the 
reasonable  expense  of  making  the  same. 

SECTION  5.  And  be  it  further  enacted.  That  all  patents  issued 
from  said  office  shall  be  issued  in  the  name  of  the  United  States, 
and  under  the  seal  of  said  office,  and  be  signed  by  the  Secre- 
tary of  State,  and  countersigned  by  the  Commissioner  of  the 
said  office,  and  shall  be  recorded,  together  with  the  descriptions, 
specifications,  and  drawings,  in  the  said  office,  in  books  to  be 
kept  for  that  purpose.  Every  such  patent  shall  contain  a  short 
description  or  title  of  the  invention  or  discovery,  correctly  in- 
dicating its  nature  and  design,  and  in  its  terms  grant  to  the 
applicant  or  applicants,  his  or  their  heirs,  administrators,  ex- 
ecutors, or  assigns,  for  a  term  not  exceeding  fourteen  years, 
the  full  and  exclusive  right  and  liberty  of  making,  using,  and 
vending  to  others  to  be  used,  the  said  invention  or  discovery, 
referring  to  the  specifications  for  the  particulars  thereof,  a  copy 
of  which  shall  be  annexed  to  the  patent,  specifying  what  the 
patentee  claims  as  his  invention  or  discovery. 

SECTION  6.  And  be  itfurther  enacted.  That  any  person  or 
persons,  having  discovered  or  invented  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new 
and  useful  improvement  on  any  art,  machine,  manufacture,  or 
composition  of  matter,  not  known  or  used  by  others  before  his 
or  their  discovery  or  invention  thereof,  and  not,  at  the  time  of 
his  application  for  a  patent,  in  public  use  or  on  sale,  with  his 
consent  or  allowance,  as  the  inventor  or  discoverer  ;  and  shall 
desire  to  obtain  an  exclusive  property  therein,  may  make  appli- 
cation, in  writing,  to  the  Commissioner  of  Patents,  expressing 
such  desire,  and  the  Commissioner,  on  due  proceedings  had, 
may  grant  a  patent  therefor.  But  before  any  inventor  shall 
receive  a  patent  for  any  such  new  invention  or  discovery,  he 
shall  deliver  a  written  description  of  his  invention  or  discovery, 
and  of  the  manner  and  process  of  making,  constructing,  using, 
and  compounding  the  same,  in  such  full,  clear,  and  exact  terms, 
avoiding  unnecessary  prolixity,  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains,  or  with  which  it  is 
most  nearly  connected,  to  make,  construct,  compound,  and  use 


THE  PATENT  ACT  OF  1836.  589 

the  same ;  and  in  case  of  any  machine,  he  shall  fully  explain 
the  principle,  and  the  several  modes  in  which  he  has  contem- 
plated the  application  of  that  principle  or  character  by  which 
it  may  be  distinguished  from  other  inventions  ;  and  shall  par- 
ticularly specify  and  point  out  the  part,  improvement,  or  com- 
bination, which  he  claims  as  his  own  invention  or  discovery. 
He  shall,  furthermore,  accompany  the  whole  with  a  drawing  or 
drawings,  and  written  references,  where  the  nature  of  the 
case  admits  of  drawings,  or  with  specimens  of  ingredients, 
and  of  the  composition  of  matter,  sufficient  in  quantity  for  the 
purpose  of  experiment,  where  the  invention  or  discovery  is  of 
a  composition  of  matter  ;  which  descriptions  and  drawings, 
signed  by  the  inventor  and  attested  by  two  witnesses,  shall  be 
filed  in  the  Patent  Office  ;  and  he  shall  moreover  furnish  a 
model  of  his  invention,  in  all  cases  which  admit  of  a  represen- 
tation by  model,  of  a  convenient  size  to  exhibit  advantageously 
its  several  parts.  The  applicant  shall  also  make  oath  or  affir- 
mation that  he  does  verily  believe  that  he  is  the  original  and 
first  inventor  or  discoverer  of  the  art,  machine,  composition, 
or  improvement,  for  which  he  solicits  a  patent,  and  that  he 
does  not  know  or  believe  that  the  same  was  ever  before  known 
or  used  ;  and  also  of  what  country  he  is  a  citizen  ;  which  oath 
or  affirmation  may  be  made  before  any  person  authorized  by 
law  to  administer  oaths. 

SECTION  7.  And  be  it  further  enacted,  That  on  the  filing  of 
any  such  application,  description,  and  specification,  and  the 
payment  of  the  duty  hereinafter  provided,  the  Commissioner 
shall  make,  or  cause  to  be  made,  an  examination  of  the  alleged 
new  invention  or  discovery  ;  and  if,  on  any  such  examination, 
it  shall  not  appear  to  the  Commissioner  that  the  same  had  been 
invented  or  discovered  by  any  other  person  in  this  country  prior 
to  the  alleged  invention  or  discovery  thereof  by  the  applicant, 
or  that  it  had  been  patented  or  described  in  any  printed  publi- 
cation in  this  or  any  foreign  country,  or  had  been  in  public  use 
or  on  sale  with  the  applicant's  consent  or  allowance  prior  to  the 
application,  if  the  Commissioner  shall  deem  it  to  be  sufficiently 
useful  and  important,  it  shall  be  his  duty  to  issue  a  patent 
therefor.  But  whenever,  on  such  examination,  it  shall  appear 


590  THE    PATENT    STATUTES. 

to  the  Commissioner  that  the  applicant  was  not  the  original  and 
first  inventor,  or  discoverer  thereof,  or  that  any  part  of  that 
which  is  claimed  as  new  had  before  been  invented  or  discov- 
ered, or  patented,  or  described  in  any  printed  publication  in 
this  or  any  foreign  country,  as  aforesaid,  or  that  the  description 
is  defective  and  insufficient,  he  shall  notify  the  applicant  thereof, 
giving  him,  briefly,  such  information  and  references  as  may  be 
useful  in  judging  of  the  propriety  of  renewing  his  appli- 
cation, or  of  altering  his  specification,  to  embrace  only  that 
part  of  the  invention  or  discovery  which  is  new.  In  every 
such  case,  if  the  applicant  shall  elect  to  withdraw  his  applica- 
tion, relinquishing  his  claim  to  the  model,  he  shall  be  entitled 
to  receive  back  twenty  dollars,  part  of  the  duty  required  by 
this  act,  on  filing  a  notice  in  writing  of  such  election  in  the 
Patent  Office,  a  copy  of  which,  certified  by  the  Commissioner, 
shall  be  a  sufficient  warrant  to  the  treasurer  for  paying  back  to 
the  said  applicant  the  said  sum  of  twenty  dollars.  But  if  the 
applicant  in  such  case  shall  persist  in  his  claims  for  a  patent,  with 
or  without  any  alteration  in  his  specification,  he  shall  be  re- 
quired to  make  oath  or  affirmation  anew,  in  manner  as  afore- 
said. And  if  the  specification  and  claim  shall  not  have  been  so 
modified  as,  in  the  opinion  of  the  Commissioner,  shall  entitle 
the  applicant  to  a  patent,  he  may,  on  appeal,  and  upon  request 
in  writing,  have  the  decision  of  a  board  of  examiners,  to  be 
composed  of  three  disinterested  persons,  who  shall  be  appoint- 
ed for  that  purpose  by  the  Secretary  of  State,  one  of  whom  at 
least,  to  be  selected,  if  practicable  and  convenient,  for  his 
knowledge  and  skill  in  the  particular  art,  manufacture,  or 
branch  of  science  to  which  the  alleged  invention  appertains  ; 
who  shall  be  under  oath  or  affirmation  for  the  faithful  and  im- 
partial performance  of  the  duty  imposed  upon  them  by  said 
appointment.  Said  board  shall  be  furnished  with  a  certificate  in 
writing  of  the  opinion  and  decision  of  the  Commissioner,  stating 
the  particular  grounds  of  his  objection,  and  the  part  or  parts  of 
the  invention  which  he  considers  as  not  entitled  to  be  patented. 
And  the  said  board  shall  give  reasonable  notice  to  the  applicant, 
as  well  as  to  the  Commissioner,  of  the  time  and  place  of  their 
meeting,  that  they  may  have  an  opportunity  of  furnishing  them 


THE  PATENT  ACT  OF  1836.  591 

mtli  such  facts  and  evidence  as  they  may  deem  necessary  to  a 
\ust  decision  ;  and  it  shall  be  the  duty  of  the  Commissioner  to 
burnish  to  the  board  of  examiners  such  information  as  he  may 
possess  relative  to  the  matter  under  their  consideration.  And 
on  an  examination  and  consideration  of  the  matter  by  such 
toard,  it  shall  be  in  their  power,  or  of  a  majority  of  them,  to 
reverse  the  decision  of  the  Commissioner,  either  in  whole  or  in 
part,  and  their  opinion  being  certified  to  the  Commissioner,  he 
shall  be  governed  thereby  in  the  further  proceedings  to  be  had 
on  such  application-:  Provided  however,  That  before  a  board 
shall  be  instituted  in  any  such  case,  the  applicant  shall  pay  to 
the  credit  of  the  treasury,  as  provided  in  the  ninth  section  of 
this  act,  the  sum  of  twenty- five  dollars,  and  each  of  said  per- 
sons so  appointed  shall  be  entitled  to  receive  for  his  services  in 
each  case  a  sum  not  exceeding  ten  dollars,  to  be  determined  and 
paid  by  the  Commissioner  out  of  any  moneys  in  his  hands, 
which  shall  be  in  full  compensation  to  the  persons  who  may  be 
so  appointed,  for  their  examination  and  certificate  as  aforesaid. 
SECTION  8.  And  be  it  further  enacted.  That  whenever  an 
application  shall  be  made  for  a  patent  which,  in  the  opinion  of  the 
Commissioner,  would  interfere  with  any  other  patent  for  which 
an  application  may  be  pending,  or  with  any  unexpired  patent 
which  shall  have  been  granted,  it  shall  be  the  duty  of  the  Com- 
missioner to  give  notice  thereof  to  such  applicants,  or  patentees, 
as  the  case  may  be  ;  and  if  either  shall  be  dissatisfied  with  the 
decision  of  the  Commissioner  on  the  question  of  priority  of  right 
or  invention,  on  a  hearing  thereof,  he  may  appeal  from  such 
decision,  on  the  like  terms  and  conditions  as  are  provided  in 
the  preceding  section  of  this  act  ;  and  the  like  proceedings 
shall  be  had,  to  determine  which  or  whether  either  of  the  appli- 
cants is  entitled  to  receive  a  patent  as  prayed  for.  But  noth- 
ing in  this  act  contained  shall  be  construed  to  deprive  an  orig- 
inal and  true  inventor  of  the  right  to  a  patent  for  his  invention, 
by  reason  of  his  having  previously  taken  out  letters-patent 
therefor  in  a  foreign  country,  and  the  same  having  been  pub- 
lished, at  any  time  within  six  months  next  preceding  the  filing 
of  his  specification  and  drawings.  And  whenever  the  appli- 
cant shall  request  it,  the  patent  shall  take  date  from  the  time 


592  THE    PATENT    STATUTES. 

of  the  filing  of  the  specification  and  drawings,  not  however 
exceeding  six  months  prior  to  the  actual  issuing  of  the  patent  ; 
and  on  like  request,  and  the  payment  of  the  duty  herein 
required,  by  any  applicant,  his  specification  and  drawings  shall 
be  tiled  in  the  secret  archives  of  the  office  until  he  shall  fur- 
nish the  model  and  the  patent  to  be  issued,  not  exceeding  the 
term  of  one  year,  the  applicant  being  entitled  to  notice  of 
interfering  applications. 

SECTION  9.  And  be  it  further  enacted,  That  before  any 
application  for  a  patent  shall  be  considered  by  the  Commissioner 
as  aforesaid,  the  applicant  shall  pay  into  the  treasury  of  the 
United  States,  or  into  the  Patent  Office,  or  into  any  of  the 
deposit  banks,  to  the  credit  of  the  treasury,  if  he  be  a  citizen 
of  the  United  States,  or  an  alien,  and  shall  have  been  resident 
in  the  United  States  for  one  year  next  preceding,  and  shall 
have  made  oath  of  his  intention  to  become  a  citizen  thereof, 
the  sum  of  thirty  dollars ;  if  a  subject  of  the  king  of  Great 
Britain,  the  sum  of  five  hundred  dollars  ;  and  all  other  per- 
sons the  sum  of  three  hundred  dollars  ;  for  which  payment 
duplicate  receipts  shall  be  taken,  one  of  which  to  be  filed  in  the 
office  of  the  Treasurer.  And  the  moneys  received  into  the 
treasury  under  this  act  shall  constitute  a  fund  for  the  payment 
of  the  salaries  of  the  officers  and  clerks  herein  provided  for, 
and  all  other  expenses  of  the  Patent  Office,  and  to  be  called  the 
patent  fund. 

SECTION  10.  And  be  it  further  enacted.  That  where  any 
person  hath  made,  or  shall  have  made,  any  new  invention,  dis- 
covery, or  improvement,  on  account  of  which  a  patent  might 
by  virtue  of  this  act  be  granted,  and  such  person  shall  die  be- 
fore any  patent  shall  be  granted  therefor,  the  right  of  applying 
for  and  obtaining  such  patent  shall  devolve  on  the  executor  or 
administrator  of  such  person,  in  trust  for  the  heirs  at  law  of  the 
deceased,  in  case  he  shall  have  died  intestate  :  but  if  otherwise, 
then  in  trust  for  his  devisees,  in  as  full  and  ample  manner, 
and  under  the  same  conditions,  limitations,  and  restrictions  as 
the  same  was  held,  or  might  have  been  claimed  or  enjoyed  by 
such  person  in  his  or  her  lifetime  ;  and  when  application  for 
a  patent  shall  be  made  by  such  legal  representatives,  the  oath 


THE   PATENT   ACT   OF    1836.  593 

or  affirmation  provided  in  the  sixth  section  of  this  act  shall 
be  so  varied  as  to  be  applicable  to  them. 

SECTION  11.  And  be  it  further  enacted,  That  every  patent 
shall  be  assignable  in  law,  either  as  to  the  whole  interest,  or 
any  undivided  part  thereof,  by  any  instrument  in  writing  ; 
which  assignment,  and  also  every  grant  and  conveyance  of  the 
exclusive  right,  under  any  patent,  to  make  and  use,  and  to 
grant  to  others  to  make  and  use  the  thing  patented  within  and 
throughout  any  specified  part  or  portion  of  the  United  States, 
shall  be  recorded  in  the  Patent  Office  within  three  months  from 
the  execution  thereof,  for  which  the  assignee  or  grantee  shall 
pay  to  the  Commissioner  the  sum  of  three  dollars. 

SECTION  12.  And  be  it  further  enacted.  That  any  citizen  of 
the  United  States,  or  alien,  who  shall  have  been  a  resident  of 
the  United  States  one  year  next  preceding,  and  shall  have 
made  oath  of  his  intention  to  become  a  citizen  thereof,  who  shall 
have  invented  any  new  art,  machine,  or  improvement  thereof, 
and  shall  desire  further  time  to  make  the  same,  may,  on 
paying  to  the  credit  of  the  treasury,  in  manner  as  provided 
in  the  ninth  section  of  this  act,  the  sum  of  twenty  dollars,  file 
in  the  Patent  Office  a  caveat,  setting  forth  the  design  and  pur- 
pose thereof,  and  its  principal  and  distinguishing  characteris- 
tics, and  praying  protection  of  his  right  till  he  shall  have 
matured  his  invention  ;  which  sum  of  twenty  dollars,  in  case  the 
person  tiling  such  caveat  shall  afterwards  take  out  a  patent  for 
the  invention  therein  mentioned,  shall  be  Considered  a  part  of 
the  sum  herein  required  for  the  same.  And  such  caveat  shall  be 
filed  in  the  confidential  archives  of  the  office,  and  preserved  in 
secrecy.  And  if  application  shall  be  made  by  any  other  person 
within  one  year  from  the  time  of  filing  such  caveat,  for  a 
patent  of  any  invention  with  which  it  may  in  any  respect  inter- 
fere, it  shall  be  the  duty  of  the  Commissioner  to  deposit  the 
description,  specifications,  drawings,  and  model,  in  the  confi- 
dential archives  of  the  office,  and  to  give  notice,  by  mail,  to 
the  person  filing  the  caveat,  of  such  application,  who  shall, 
within  three  months  after  receiving  the  notice,  if  he  would 
avail  himself  of  the  benefit  of  his  caveat,  file  his  description, 
specifications,  drawings,  and  model ;  and  if,  in  the  opinion  of 


594 


THE    PATENT    STATUTES. 


the  Commissioner,  the  specifications  of  claim  interfere  with 
each  other,  like  proceedings  may  be  had  in  all  respects  as  are 
in  this  act  provided  in  the  case  of  interfering  applications  : 
Provided  however,  That  no  opinion  or  decision  of  any  board 
of  examiners,  under  the  provisions  of  this  act,  shall  preclude 
any  person,  interested  in  favor  of  or  against  the  validity  of  any 
patent  which  has  been  or  may  hereafter  be  granted,  from  the 
right  to  contest  the  same  in  any  judicial  court  in  any  action  in 
which  its  validity  may  come  in  question. 

SECTION  13.  And  be  it  further  enacted,  That  whenever  any 
patent  which  has  heretofore  been  granted,  or  which  shall  here- 
after be  granted,  shall  be  inoperative,  or  invalid,  by  reason  of 
a  defective  or  insufficient  description  or  specification,  or  by 
reason  of  the  patentee  claiming  in  his  specification  as  his  own 
invention  more  than  he  had  or  shall  have  a  right  to  claim  as 
new  ;  if  the  error  has  or  shall  have  arisen  by  inadvertency,  ac- 
cident, or  mistake,  and  without  any  fraudulent  or  deceptive  in- 
tention, it  shall  be  lawful  for  the  Commissioner,  upon  the  sur- 
render to  him  of  such  patent,  and  the  payment  of  the  further 
duty  of  fifteen  dollars,  to  cause  a  new  patent  to  be  issued  to 
the  said  inventor,  for  the  same  invention,  for  the  residue  of  the 
period  then  unexpired  for  which  the  original  patent  was  grant- 
ed, in  accordance  with  the  patentee's  corrected  description  and 
specification.  And  in  case  of  his  death,  or  any  assignment  by 
him  made  of  the  original  patent,  a  similar  right  shall  vest  in 
his  executors,  administrators,  or  assignees.  And  the  patent,  so 
reissued,  together  with  the  corrected  description  and  specifica- 
tion, shall  have  the  same  effect  and  operation  in  law,  on  the 
trial  of  all  actions  hereafter  commenced  for  causes  subsequently 
accruing,  as  though  the  same  had  been  originally  filed  in  such 
corrected  form,  before  the  issuing  out  of  the  original  patent. 
And  whenever  the  original  patentee  shall  be  desirous  of  adding 
the  description  and  specification  of  any  new  improvement  of 
the  original  invention  or  discovery  which  shall  have  been  in- 
vented or  discovered  by  him  subsequent  to  the  date  of  his 
patent,  he  may,  like  proceedings  being  had  in  all  respects  as  in 
the  case  of  original  applications,  and  on  the  payment  of  fifteen 
dollars  as  hereinbefore  provided,  have  the  same  annexed  to  the 


THE  PATENT  ACT  OF  1836.  595 

original  description  and  specification  ;  and  the  Commissioner 
shall  certify,  on  the  margin  of  such  annexed  description  and 
specification,  the  time  of  its  being  annexed  and  recorded  ;  and 
the  same  shall  thereafter  have  the  same  effect  in  law,  to  all  in- 
tents and  purposes,  as  though  it  had  been  embraced  in  the 
original  description  and  specification. 

SECTION  14.  And  be  it  further  enacted.  That  whenever,  in 
any  action  for  damages  for  making,  using,  or  selling  the  thing 
whereof  the  exclusive  right  is  secured  by  any  patent  heretofore 
granted,  or  by  any  patent  which  may  hereafter  be  granted,  a 
verdict -shall  be  rendered  for  the  plaintiff  in  such  action,  it 
shall  be  in  the  power  of  the  court  to  render  judgment  for  any 
sum  above  the  amount  found  by  such  verdict  as  the  actual 
damages  sustained  by  the  plaintiff,  not  exceeding  three  times 
the  amount  thereof,  according  to  the  circumstances  of  the  case, 
with  costs  ;  and  such  damages  may  be  recovered  by  .action  on 
the  case,  in  any  court  of  competent  jurisdiction,  to  be  brought 
in  the  name  or  names  of  the  person  or  persons  interested, 
whether  as  patentees,  assignees,  or  as  grantees  of  the  exclusive 
right  within  and  throughout  a  specified  part  of  the  United 
States. 

SECTION  15.  And  be  -it  further  enacted..,  That  the  defendant 
in  any  such  action  shall  be  permitted  to  plead  the  general 
issue,  and  to  give  this  act  and  any  special  matter  in  evidence, 
of  which  notice  in  writing  may  have  been  given  to  the  plain- 
tiff or  his  attorney,  thirty  days  before  trial,  tending  to  prove 
that  the  description  and  specification  filed  by  the  plaintiff  does 
not  contain  the  whole  truth  relative  to  his  invention  or  dis- 
covery, or  that  it  contains  more  than  is  necessary  to  produce 
the  described  effect ;  which  concealment  or  addition  shall  fully 
appear  to  have  been  made  for  the  purpose  of  deceiving  the 
public,  or  that  the  patentee  was  not  the  original  and  first 
inventor  or  discoverer  of  the  thing  patented,  or  of  a  substantial 
and  material  part  thereof  claimed  as  new,  or  that  it  had  been 
described  in  some  public  work  anterior  to  the  supposed  dis- 
covery thereof  by  the  patentee,  or  had  been  in  public  use  or 
on  sale  with  the  consent  and  allowance  of  the  patentee  before 
his  application  for  a  patent,  or  that  he  had  surreptitiously  or 


596  THE    PATENT    STATUTES. 

unjustly  obtained  the  patent  for  that  which  was  in  fact  invented 
or  discovered  by  another,  who  was  using  reasonable  diligence 
in  adapting  and  perfecting  the  same  ;  or  that  the  patentee,  if 
an  alien  at  the  time  the  patent  was  granted,  had  failed  and 
neglected,  for  the  space  of  eighteen  months  from  the  date  of 
the  patent,  to  put  and  continue  on  sale  to  the  public,  on  rea- 
sonable terms,  the  invention  or  discovery  for  which  the  patent 
issued  ;  in  either  of  which  cases  judgment  shall  be  rendered 
for  the  defendant  with  costs.  And  whenever  the  defendant 
relies  in  his  defence  on  the  fact  of  a  previous  invention, 
knowledge,  or  use  of  the  thing  patented,  he  shall  state,  in  his 
notice  of  special  matter,  the  names  and  places  of  residence  of 
those  whom  he  intends  to  prove  to  have  possessed  a  prior 
knowledge  of  the  thing,  and  where  the  same  had  been  used  : 
Provided  however,  That  whenever  it  shall  satisfactorily  appear 
that  the  patentee,  at  the  time  of  making  his  application  for 
the  patent,  believed  himself  to  be  the  first  inventor  or  discov- 
erer of  the  thing  patented,  the  same  shall  not  be  held  to  be 
void  on  account  of  the  invention  or  discovery  or  any  part 
thereof  having  been  before  known  or  used  in  any  foreign  coun- 
try, it  not  appearing  that  the  same  or  any  substantial  part 
thereof  had  before  been  patented  or  described  in  any  printed 
publication.  And  provided  also,  That  whenever  the  plaintiff 
shall  fail  to  sustain  his  action  on  the  ground  that  in  his  specifi- 
cation of  claim  is  embraced  more  than  that  of  which  he  was 
the  first  inventor,  if  it  shall  appear  that  the  defendant  had 
used  or  violated  any  part  of  the  invention  justly  and  truly 
specified  and  claimed  as  new,  it  shall  be  in  the  power  of  the 
court  to  adjudge  and  award  as  to  costs,  as  may  appear  to  be- 
just  and  equitable. 

SECTION  16.  And  l>e  it  further  enacted,  That  whenever 
there  shall  be  two  interfering  patents,  or  whenever  a  patent 
on  application  shall  have  been  refused  on  an  adverse  decision 
of  a  board  of  examiners,  on  the  ground  that  the  patent  applied 
for  would  interfere  with  an  unexpired  patent  previously 
granted,  any  person  interested  in  any  such  patent,  either  by 
assignment  or  otherwise,  in  the  one  case,  and  any  such  appli- 
cant in  the  other  case,  may  have  remedy  by  bill  in  equity  ; 


THE  PATENT  ACT  OF  1836.  597 

and  the  court  having  cognizance  thereof,  on  notice  to  adverse' 
parties,  and  other  due  proceedings  had,  may  adjudge  and  de- 
clare either  the  patents  void  in  the  whole  or  in  part,  or  inoper- 
ative or  invalid  in  any  particular  part  or  portion  of  the  United 
States,  according  to  the  interest  which  the  parties  to  such  suit 
may  possess  in  the  patent  or  the  inventions  patented,  and  may 
also  adjudge  that  such  applicant  is  entitled,  according  to  the 
principles  and  provisions  of  this  act,  to  have  and  receive  a 
patent  for  his  invention,  as  specified  in  his  claim,  or  for  any 
part  thereof,  as  the  fact  of  priority  of  right  or  invention  shall 
in  any  such  case  be  made  to  appear.  And  such  adjudication, 
if  it  be  in  favor  of  the  right  of  such  applicant,  shall  authorize 
the  Commissioner  to  issue  such  patent,  on  his  filing  a  copy  of 
the  adjudication,  and  otherwise  complying  with  the  requisi- 
tions of  this  act.  Provided  however,  That  no  such  judgment 
or  adjudication  shall  affect  the  rights  of  any  person  except  the 
parties  to  the  action  and  those  deriving  title  from  or  under 
them  subsequent  to  the  rendition  of  such  judgment. 

SECTION  17.  And  be  it  further  enacted,  That  all  actions, 
suits,  controversies,  and  cases  arising  under  any  law  of  the 
United  States,  granting  or  confirming  to  inventors  the  exclu- 
sive right  to  their  inventions  or  discoveries,  shall  be  originally 
cognizable,  as  well  in  equity  as  at  law,  by  the  circuit  courts 
of  the  United  States,  or  any  district  court  having  the  power 
and  jurisdiction  of  a  circuit  court ;  which  courts  shall  have 
power,  upon  a  bill  in  equity  filed  by  any  party  aggrieved,  in 
any  such  case,  to  grant  injunctions,  according  to  the  course 
and  principles  of  courts  of  equity,  to  prevent  the  violation  of 
the  rights  of  any  inventor  as  secured  to  him  by  any  law  of  the 
United  States,  on  such  terms  and  conditions  as  said  courts  may 
deem  reasonable  :  Provided  however,  That  from  all  judgments 
and  decrees  from  any  such  court  rendered  in  the  premises,  a 
writ  of  error  or  appeal,  as  the  case  may  require,  shall  lie  to 
the  Supreme  Court  of  the  United  States,  in  the  same  manner 
and  under  the  same  circumstances  as  is  now  provided  by  law 
in  other  judgments  and  decrees  of  circuit  courts,  and  in  all 
other  cases  in  which  the  court  shall  deem  it  reasonable  to  allow 
the  same. 


598  THE    PATENT    STATUTES. 

SECTION  18.  And  be  it  further  enacted,  That  whenever 
any  patentee  of  an  invention  or  discovery  shall  desire  an  ex- 
tension of  his  patent  beyond  the  term  of  its  limitation,  he  may 
make  application  therefor,  in  writing,  to  the  Commissioner 
of  the  Patent  Office,  setting  forth  the  grounds  thereof  ;  and 
the  Commissioner  shall,  on  the  applicant's  paying  the  sum  of 
forty  dollars  to  the  credit  of  the  treasury,  as  in  the  case  of  an 
original  application  for  a  patent,  cause  to  be  published  in  one 
or  more  of  the  principal  newspapers  in  the  city  of  Washington, 
and  in  such  other  paper  or  papers  as  he  may  deem  proper, 
published  in  the  section  of  country  most  interested  adversely 
to  the  extension  of  the  patent,  a  notice  of  such  application  and 
of  the  time  and  place  when  and  where  the  same  will  be  con- 
sidered, that  any  person  may  appear  and  show  cause  why  the 
extension  should  not  be  granted.  And  the  Secretary  of  State, 
the  Commissioner  of  the  Patent  Office,  and  the  Solicitor  of 
the  Treasury  shall  constitute  a  board  to  hear  and  decide  upon 
the  evidence  produced  before  them  both  for  and  against  the 
extension,  and  shall  sit  for  that  purpose  at  the  time  and  place 
designated  in  the  published  notice  thereof.  The  patentee 
shall  furnish  to  said  board  a  statement,  in  writing,  under  oath, 
of  the  ascertained  value  of  the  invention,  and  of  his  receipts 
and  expenditures,  sufficiently  in  detail  to  exhibit  a  true  and 
faithful  account  of  loss  and  profit  in  any  manner  accruing  to 
him  from  and  by  reason  of  said  invention.  And  if,  upon  a 
hearing  of  the  matter,  it  shall  appear  to  the  full  and  entire 
satisfaction  of  said  board,  having  due  regard  to  the  public 
interest  therein,  that  it  is  just  and  proper  that  the  term  of  the 
patent  should  be  extended,  by  reason  of  the  patentee,  without 
neglect  or  fault  on  his  part,  having  failed  to  obtain,  from  the 
use  and  sale  of  his  invention,  a  reasonable  remuneration  for 
the  time,  ingenuity,  and  expense  bestowed  upon  the  same,  and 
the  introduction  thereof  into  use,  it  shall  be  the  duty  of  the 
Commissioner  to  renew  and  extend  the  patent,  by  making  a 
certificate  thereon  of  such  extension,  for  the  term  of  seven 
years  from  and  after  the  expiration  of  the  first  term  ;  which 
certificate,  with  a  certificate  of  said  board  of  their  judgment 


THE  PATENT  ACT  OF  1836.  599 

and  opinion  as  aforesaid,  shall  be  entered  on  record  in  the 
Patent  Office  ;  and  thereupon  the  said  patent  shall  have  the 
same  effect  in  law  as  though  it  had  been  originally  granted  for 
the  term  of  twenty-one  years.  And  the  benefit  of  such  re- 
newal shall  extend  to  assignees  and  grantees  of  the  right  to  use 
the  thing  patented,  to  the  extent  of  their  respective  interests 
therein  :  Provided  however,  That  no  extension  of  a  patent 
shall  be  granted  after  the  expiration  of  the  term  for  which  it 
was  originally  issued. 

SECTION  19.  And  be  it  further  enacted,  That  there  shall  be 
provided  for  the  use  of  said  office,  a  library  of  scientific  works 
and  periodical  publications,  both  foreign  and  American,  calcu- 
lated to  facilitate  the  discharge  of  the  duties  hereby  required 
of  the  chief  officers  therein,  to  be  purchased  under  the  direc- 
tion of  the  Committee  of  the  Library  of  Congress.  And  the 
sum  of  fifteen  hundred  dollars  is  hereby  appropriated  for  that 
purpose,  to  be  paid  out  of  the  patent  fund. 

SECTION  20.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  Commissioner  to  cause  to  be  classified  and  arranged, 
in  such  rooms  or  galleries  as  may  be  provided  for  that  purpose, 
in  suitable  cases,  when  necessary  for  their  preservation,  and  in 
such  manner  as  shall  be  conducive  to  a  beneficial  and  favorable 
display  thereof,  the  models  and  specimens  of  compositions  and 
of  fabrics  and  other  manufactures  and  works  of  art,  patented 
or  unpatented,  which  have  been,  or  shall  hereafter  be,  depos- 
ited in  said  office.  And  said  rooms  or  galleries  shall  be  kept 
open  during  suitable  hours  for  public  inspection. 

SECTION  21.  And  be  it  further  enacted,  That  all  acts  and 
parts  of  acts  heretofore  passed  on  this  subject  be,  and  the  same 
are  hereby  repealed  :  Provided  however,  That  all  actions  and 
processes  in  law  or  equity  sued  out  prior  to  the  passage  of  this 
act  may  be  prosecuted  to  final  judgment  and  execution,  in  the 
same  manner  as  though  this  act  had  not  been  passed,  excepting 
and  saving  the  application  to  any  such  action  of  the  provisions 
of  the  fourteenth  and  fifteenth  sections  of  this  act,  so  far  as 
they  may  be  applicable  thereto  ;  And  provided  also,  That  all 
applications  or  petitions  for  patents,  pending  at  the  time  of  the 


600  THE   PATENT    STATUTES. 

passage  of  this  act,  in  cases  where  the  duty  has  been  paid,  shall 
be  proceeded  with  and  acted  on  in  the  same  manner  as  though 
filed  after  the  passage  hereof. 

APPROVED  July  4,  1836. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT  OF  1837. 

5  STATUTES  AT  LARGE,  191. 
An   Act  in  addition  to   the  act  to  promote   the  progress   of 

science  and  useful  arts. 

SECTION  1.  Be  it  enacted  l)y  the  Senate  and  House  of 
Representatives  of  the  United  States  of  America  in  Congress 
assembled,  That  any  person  who  may  be  in  possession  of,  or  in 
any  way  interested  in,  any  patent  for  an  invention,"  disco  very, 
or  improvement,  issued  prior  to  the  fifteenth  day  of  December, 
in  the  year  of  our  Lord  one  thousand  eight  hundred  and  thirty- 
six,  or  in  an  assignment  of  any  patent,  or  interest  therein,  ex- 
ecuted and  recorded  prior  to  the  said  fifteenth  day  of  De- 
cember, may,  without  charge,  on  presentation  or  transmission 
thereof  to  the  Commissioner  of  Patents,  have  the  same  record- 
ed anew  in  the  Patent  Office,  together  with  the  descriptions, 
specifications  of  claim  and  drawings  annexed  or  belonging  to  the 
same  ;  and  it  shall  be  the  duty  of  the  Commissioner  to  cause 
the  same,  or  any  authenticated  copy  of  the  original  record, 
specification,  or  drawing  which  he  may  obtain,  to  be  transcribed 
and  copied  into  books  of  record  to  be  kept  for  that  purpose  ; 
and  wherever  a  drawing  was  not  originally  annexed  to  the 
patent  and  referred  to  in  the  specification,  any  drawing  pro- 
duced as  a  delineation  of  the  invention,  being  verified  by  oath 
in  such  manner  as  the  Commissioner  shall  require,  may  be  trans- 
mitted and  placed  on  file,  or  copied  as  aforesaid,  together  with 
certificate  of  the  oath  ;  or  such  drawings  may  be  made  in  the 
office,  under  the  direction  of  the  Commissioner,  in  conformity 
with  the  specification.  And  it  shall  be  the  duty  of  the  Com- 
missioner to  take  such  measures  as  may  be  advised  and  de- 
termined by  the  Board  of  Commissioners  provided  for  in  the 


THE  PATENT  ACT  OF  1837.  601 

fourth  section  of  this  act,  to  obtain  the  patents,  specifications, 
and  copies  aforesaid,  for  the  purpose  of  being  so  transcribed 
and  recorded.  And  it  shall  be  the  duty  of  each  of  the  several 
clerks  of  the  judicial  courts  of  the  United  States,  to  transmit  as 
soon  as  may  be,  to  the  Commissioner  of  the  Patent  Office,  a 
statement  of  all  the  authenticated  copies  of  patents,  descriptions, 
specifications,  and  drawings  of  inventions  and  discoveries  made 
and  executed  prior  to  the  aforesaid  fifteenth  day  of  December, 
which  may  be  found  on  the  files  of  his  office  ;  and  also  to  make 
out  and  transmit  to  said  Commissioner,  for  record  as  aforesaid, 
a  certified  copy  of  every  such  patent,  description,  specification, 
or  drawing,  which  shall  be  specially  required  by  said  Com- 
missioner. 

SECTION  2.  And  be  it  further  enacted,  That  copies  of  sucli 
record  and  drawings,  certified  by  the  Commissioner,  or,  in  his 
absence,  by,  the  chief  clerk,  shall  be  prima  facie  evidence  of 
the  particulars  of  the  invention  and  of  the  patent  granted 
therefor  in  any  judicial  court  of  the  United  States,  in  all  cases 
where  copies  of  the  original  record  or  specification  and  draw- 
ings would  be  evidence,  without  proof  of  the  loss  of  such  orig- 
inals ;  and  no  patent  issued  prior  to  the  aforesaid  fifteenth  day  of 
December  shall,  after  the  first  day  of  June  next,  be  received 
in  evidence  in  any  of  the  said  courts  in  behalf  of  the  patentee 
or  other  person  who  shall  be  in  possession  of  the  same,  unless  it 
shall  have  been  so  recorded  anew,  and  a  drawing  of  the  in- 
vention, if  separate  from  the  patent,  verified  as  aforesaid,  de- 
posited in  the  Patent  Office  ;  nor  shall  any  written  assignment 
of  any  such  patent,  executed  and  recorded  prior  to  the  said 
fifteenth  day  of  December,  be  received  in  evidence  in  any  of 
the  said  courts  in  behalf  of  the  assignee  or  other  person  in  pos- 
session thereof,  until  it  shall  have  been  so  recorded  anew. 

SECTION  3.  And  be  it  further  enacted,  That  whenever  it  shall 
appear  to  the  Commissioner  that  any  patent  was  destroyed  by 
the  burning  of  the  Patent  Office  building  on  the  aforesaid 
fifteenth  day  of  December,  or  was  otherwise  lost  prior  thereto, 
it  shall  be  his  duty,  on  application  therefor  by  the  patentee  or 
other  person  interested  therein,  to  issue  a  new  patent  for  the 
same  invention  or  discovery,  bearing  the  date  of  the  original 


602  THE    PATENT    STATUTES. 

patent,  with  his  certificate  thereon  that  it  was  made  and  issued 
pursuant  to  the  provisions  of  the  third  section  of  this  act,  and 
shall  enter  the  same  of  record  :  Provided  however.  That  be- 
fore such  patent  shall  be  issued  the  applicant  therefor  shall  de- 
posit in  the  Patent  Office  a  duplicate,  as  near  as  may  be,  of  the 
original  model,  drawings,  and  description,  with  specification 
of  the  invention  or  discovery,  verified  by  oath,  as  shall  be  re- 
quired by  the  Commissioner ;  and  such  patent,  and  copies  of 
such  drawings  and  descriptions,  duly  certified,  shall  be  ad- 
missible as  evidence  in  any  judicial  court  of  the  United  States, 
and  shall  protect  the  rights  of  the  patentee,  his  administrators, 
heirs,  and  assigns,  to  the  extent  only  in  which  they  would 
have  been  protected  by  the  original  patent  and  specifica- 
tion. 

SECTION  4.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  Commissioner  to  procure  a  duplicate  of  such  of  the 
models,  destroyed  by  fire  on  the  aforesaid  fifteenth  day  of 
December,  as  were  most  valuable  and  interesting,  and  whose 
preservation  would  be  important  to  the  public  ;  and  such  as 
would  be  necessary  to  facilitate  the  just  discharge  of  the  duties 
imposed  by  law  on  the  Commissioner  in  issuing  patents,  and  to 
protect  the  rights  of  the  public  and  of  patentees  in  patented 
inventions  and  improvements  :  Provided,  That  a  duplicate  of 
such  models  may  be  obtained  at  a  reasonable  expense  :  And 
provided  also,  That  the  whole  amount  of  expenditure  for  this 
purpose  shall  not  exceed  the  sum  of  one  hundred  thousand 
dollars.  And  there  shall  be  a  temporary  board  of  Commis- 
sioners, to  be  composed  of  the  Commissioner  of  the  Patent 
Office  and  two  other  persons  to  be  appointed  by  the  President, 
whose  duty  it  shall  be  to  consider  and  determine  upon  the  best 
and  most  judicious  mode  of  obtaining  models  of  suitable  con- 
struction ;  and  also  to  consider  and  determine  what  models  may 
be  procured  in  pursuance  of,  and  in  accordance  with,  the  pro- 
visions and  limitations  in  this  section  contained.  And  said 
commissioners  may  make  and  establish  all  such  regulations, 
terms,  and  conditions,  not  inconsistent  with  law,  as  in  their 
opinion  may  be  proper  and  necessary  to  carry  the  provisions  of 
this  section  into  effect,  according  to  its  true  intent. 


THE  PATENT  ACT  OF  1837.  603 

SECTION  5.  And  be  it  further  enacted,  That,  whenever  a 
patent  shall  be  returned  for  correction  and  reissue  under  the 
thirteenth  section  of  the  act  to  which  this  is  additional,  and  the 
patentee  shall  desire  several  patents  to  be  issued  for  distinct 
and  separate  parts  of  the  thing  patented,  he  shall  tirst  pay,  in 
manner  and  in  addition  to  the  sura  provided  by  that  act,  the 
sum  of  thirty  dollars  for  each  additional  patent  so  to  be  issued  : 
Provided  however,  That  no  patent  made  prior  to  the  aforesaid 
fifteenth  day  of  December  shall  be  corrected  and  reissued  until 
a  duplicate  of  the  model  and  drawing  of  the  thing  as  originally 
invented,  verified  by  oath  as  shall  be  required  by  the  Commis- 
sioner, shall  be  deposited  in  the  Patent  Office  : 

Nor  shall  any  addition  of  an  improvement  be  made  to  any 
patent  heretofore  granted,  nor  any  new  patent  be  issued  for  an 
improvement  made  in  any  machine,  manufacture,  or  process, 
to  the  original  inventor,  assignee,  or  possessor  of  a  patent 
therefor,  nor  any  disclaimer  be  admitted  to  record,  until  a 
duplicate  model  and  drawing  of  the  thing  originally  intended, 
verified  as  aforesaid,  shall  have  been  deposited  in  the  Patent 
Office,  if  the  Commissioner  shall  require  the  same  ;  nor  shall 
any  patent  be  granted  for  an  invention,  improvement,  or  dis- 
covery, the  model  or  drawing  of  which  shall  have  been  lost, 
until  another  model  and  drawing,  if  required  by  the  Commis- 
sioner, shall,  in  like  manner,  be  deposited  in  the  Patent 
Office. 

And  in  all  such  cases,  as  well  as  in  those  which  may  arise 
under  the  third  section  of  this  act,  the  question  of  compensa- 
tion for  such  models  and  drawings  shall  be  subject  to  the  judg- 
ment and  decision  of  the  Commissioners,  provided  for  in  the 
fourth  section,  under  the  same  limitations  and  restrictions  as 
are  therein  prescribed. 

SECTION  6.  And  be  it  further  enacted,  That  any  patent 
hereafter  to  be  issued  may  be  made  and  issued  to  the  assignee 
or  assignees  of  the  inventor  or  discoverer,  the  assignment 
thereof  being  first  entered  of  record,  and  the  application 
therefor  being  duly  made,  and  the  specification  duly  sworn  to- 
by the  inventor.  And  in  all  cases  hereafter,  the  applicant 
for  a  patent  shall  be  held  to  furnish  duplicate  drawings,  when- 


604  THE    PATENT    STATUTES. 

ever  the  case  admits  of  drawings,  one  of  which  to  be  deposited 
in  the  office,  and  the  other  to  be  annexed  to  the  patent,  and 
considered  a  part  of  the  specification. 

SECTION  7.  And  be  it  further  enacted,  That,  whenever  any 
patentee  shall  have,  through  inadvertence,  accident,  or  mis- 
take, made  his  specification  of  claim  too  broad,  claiming  more 
than  that  of  which  he  was  the  original  or  first  inventor,  some 
material  or  substantial  part  of  the  thing  patented  being  truly 
and  justly  his  own,  any  such  patentee,  his  administrators,  ex- 
ecutors, and  assigns,  whether  of  the  whole  or  of  a  sectional 
interest  therein,  may  make  disclaimer  of  suck  parts  of  the 
thing  patented  as  the  disclaimant  shall  not  claim  to  hold  by 
virtue  of  the  patent  or  assignment,  stating  therein  the  extent 
of  his  interest  in  such  patent  ;  which  disclaimer  shall  be  in 
writing,  attested  by  one  or  more  witnesses,  and  recorded  in  the 
Patent  Office,  on  payment  by  the  person  disclaiming  in  manner 
as  other  patent  duties  are  required  by  law  to  be  paid,  of -the 
sum  of  ten  dollars.  And  such  disclaimer  shall  thereafter  be 
taken  and  considered  as  part  of  the  original  specification,  to 
the  extent  of  the  interest  which  shall  be  possessed  in  the  patent 
or  right  secured  thereby,  by  the  disclaimant,  and  by  those 
claiming  by  or  under  him  subsequent  to  the  record  thereof. 
But  no  such  disclaimer  shall  affect  any  action  pending  at  the 
time  of  its  being  filed,  except  so  far  as  may  relate  to  the 
question  of  unreasonable  neglect  or  delay  in  filing  the  same. 

SECTION  8.  And  be  it  further  enacted,  That,  whenever 
application  shall  be  made  to  the  Commissioner  for  any  addition 
of  a  newly  discovered  improvement  to  be  made  to  an  existing 
patent,  or  whenever  a  patent  shall  be  returned  for  correction 
and  reissue,  the  specification  of  claim  annexed  to  every  such 
patent  shall  be  subject  to  revision  and  restriction,  in  the  same 
manner  as  are  original  applications  for  patents  ;  the  Commis- 
sioner shall  not  add  any  such  improvement  to  the  patent  in 
the  one  case,  nor  grant  the  reissue  in  the  other  case,  until  the 
applicant  shall  have  entered  a  disclaimer,  or  altered  his  speci- 
fication of  claim  in  accordance  with  the  decision  of  the  Commis- 
sioner ;  and  in  all  such  cases,  the  applicant,  if  dissatisfied  with 
euch  decision,  shall  have  the  same  remedy,  and  be  entitled  to 


THE  PATENT  ACT  OF  1837.  605 

the  benefit  of  the  same  privileges  and  proceedings  as  are  pro- 
vided by  law  in  the  case  of  original  applications  for  patents. 

SECTION  9.  And  be  it  further  enacted,  any  thing  in  the 
fifteenth  section  of  the  act  to  which  this  is  additional  to  the 
contrary  notwithstanding,  That,  whenever  by  mistake,  acci- 
dent, or  inadvertence,  and  without  any  wilful  default  or  intent 
to  defraud  or  mislead  the  public,  any  patentee  shall  have  in 
his  specification  claimed  to  be  the  original  and  first  inventor  or 
discoverer  of  any  material  or  substantial  part  of  the  thing 
patented,  of  which  he  was  not  the  first  and  original  inventor, 
and  shall  have  no  legal  or  just  right  to  claim  the  same,  in  every 
such  case  the  patent  shall  be  deemed  good  and  valid  for  so 
much  of  the  invention  or  discovery  as  shall  be  truly  and  bond 
fide  his  own  ;  Provided,  It  shall  be  a  material  and  substantial 
part  of  the  thing  patented,  and  be  definitely  distinguishable 
from  the  other  parts  so  claimed  without  right  as  aforesaid. 
And  every  such  patentee,  his  executors,  administrators,  and 
assigns,  whether  of  the  whole,  or  of  a  sectional  interest- there- 
in, shall  be  entitled  to  maintain  a  suit  at  law  or  in  equity  on 
such  patent  for  any  infringement  of  such  part  of  the  invention 
or  discovery  as  shall  be  bond  fide  his  own  as  aforesaid,  not- 
withstanding the  specification  may  embrace  more  than  he  shall 
have  any  legal  right  to  claim.  But,  in  every  such  case  in 
which  a  judgment  or  verdict  shall  be  rendered  for  the  plain*  iff, 
he  shall  not  be  entitled  to  recover  costs  against  the  defendant, 
unless  he  shall  have  entered  at  the  Patent  Office,  prior  to  the 
commencement  of  the  suit,  a  disclaimer  of  all  that  part  of  the 
thing  patented  which  was  so  claimed  without  right.  Provided 
however,  That  no  person  bringing  any  such  suit  shall  be  entitled 
to  the  benefits  of  the  provisions  contained  in  this  section,  who 
shall  have  unreasonably  neglected  or  delayed  to  enter  at  the 
Patent  Office  a  disclaimer  as  aforesaid. 

SECTION  10.  And  be  it  further  enacted,  That  the  Commis- 
sioner is  hereby  authorized  and  empowered  to  appoint  agents, 
in  not  exceeding  twenty  of  the  principal  cities  or  towns  in  the 
United  States  as  may  best  accommodate  the  different  sections 
of  the  country,  for  the  purpose  of  receiving  and  forwarding 
to  the  Patent  Office  all  such  models,  specimens  of  ingredients 


606 


THE    PATENT    STATUTES. 


and  manufactures,  as  shall  be  intended  to  be  patented  or  de 
posited  therein,  the  transportation  of  the  same  to  be  charge- 
able to  the  patent  fund. 

SECTION  11.  And  ~be  it  further  enacted,  That,  instead  of 
one  examining  clerk,  as  provided  by  the  second  section  of  the 
act  to  which  this  is  additional,  there  shall  be  appointed,  in 
manner  therein  provided,  two  examining  clerks,  each  to  receive 
an  annual  salary  of  fifteen  hundred  dollars  ;  and  also,  an  addi- 
tional copying  clerk,  at  an  annual  salary  of  eight  hundred 
dollars.  And  the  Commissioner  is  also  authorized  to  employ, 
from  time  to  time,  as  many  temporary  clerks  as  may  be  neces- 
sary to  execute  the  copying  and  draughting  required  by  the 
first  section  of  this  act,  and  to  examine  and  compare  the  records 
with  the  originals,  who  shall  receive  not  exceeding  seven  cents 
for  every  page  of  one  hundred  words,  and  for  drawings  and 
comparison  of  records  with  originals,  such  reasonable  compen- 
sation as  shall  be  agreed  upon  or  prescribed  by  the  Commis- 
sioner'. 

SECTION  12.  And  be  it  further  enacted,  That,  wherever  the 
application  of  any  foreigner  for  a  patent  shall  be  rejected  and 
withdrawn  for  want  of  novelty  in  the  invention,  pursuant  to 
the  seventh  section  of  the  act  to  which  this  is  additional,  the 
certificate  thereof  of  the  Commissioner  shall  be  a  sufficient 
warrant  to  the  treasurer  to  pay  back  to  such  applicant  two 
thirds  of  the  duty  he  shall  have  paid  into  the  treasury  on  ac- 
count of  such  application. 

SECTION  13.  And  be  it  further  enacted,  That  in  all  cases  in 
which  an  oath  is  required  by  this  act,  or  by  the  act  to  which 
this  is  additional,  if  the  person  of  whom  it  is  required  shall  be 
conscientiously  scrupulous  of  taking  an  oath,  affirmation  may 
be  substituted  therefor. 

SECTION  14.  And  be  it  further  enacted,  That  all  moneys 
paid  into  the  treasury  of  the  United  States  for  patents  and  for 
fees  for  copies  furnished  by  the  Superintendent  of  the  Patent 
Office  prior  to  the  passage  of  the  act  to  which  this  is  additional, 
shall  be  carried  to  the  credit  of  the  patent  fund  created  by  said 
act ;  and  the  moneys  constituting  said  fund  shall  be,  and  the 
game  are  hereby,  appropriated  for  the  payment  of  the  salaries 


THE  PATENT  ACT  OF  1837.  607 

of  the  officers  and  clerks  provided  for  by  said  act,  and  all  other 
expenses  of  the  Patent  Office,  including  all  the  expenditures 
provided  for  by  this  act ;  and  also  for  such  other  purposes  as 
are  or  may  be  hereafter  specially  provided  for  by  law.  And 
the  Commissioner  is  hereby  authorized  to  draw  upon  said  fund, 
from  time  to  time,  for  such  sums  as  shall  be  necessary  to  carry 
into  effect  the  provisions  of  this  act,  governed,  however,  by 
the  several  limitations  herein  contained.  And  it  shall  be  his 
duty  to  lay  before  Congress,  in  the  month  of  January,  annually, 
a  detailed  statement  of  the  expenditures  and  payments  by  him 
made  from  said  fund  ;  And  it  shall  also  be  his  duty  to  lay  be- 
fore Congress,  in  the  month  of  January,  annually,  a  list  of  all 
patents  which  shall  have  been  granted  during  the  preceding 
year,  designating,  under  proper  heads,  the  subjects  of  such 
patents,  and  furnishing  an  alphabetical  list  of  the  patentees, 
with  their  places  of  residence  ;  and  he  shall  also  furnish  a  list 
of  all  patents  which  shall  have  become  public  property  during 
the  same  period  ;  together  with  such  other  information  of  the 
state  and  condition  of  the  Patent  Office  as  may  be  useful  to 
Congress  or  the  public. 

APPROVED  March  3,  1837. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT    ACT    OF  1839. 

5  STATUTES  AT  LARGE,  353. 

An  Act  in  addition  to  "  An  act  to  promote  the  progress  of  the 

useful  arts." 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  there  shall  be  appointed,  in  manner  provided  in 
the  second  section  of  the  act  to  which  this  is  additional,  two  as- 
sistant examiners,  each  to  receive  an  annual  salary  of  twelve 
hundred  and  fifty  dollars. 

SECTION  2.  And  be  it  further  enacted.  That  the  Commissioner 
be  authorized  to  employ  temporary  clerks  to  do  any  necessary 
transcribing,  whenever  the  current  business  of  the  office  requires 


608'  THE    PATENT    STATUTES. 

it ;  Provided  however,  That  instead  of  salary,  a  compensation 
shall  be  allowed,  at  a  rate  not  greater  than  is  charged  for  copies 
now  furnished  by  the  office. 

SECTION  3.  And  be  it  further  enacted,  That  the  Commissioner 
is  hereby  authorized  to  publish  a  classified  and  alphabetical  list 
of  all  patents  granted  by  the  Patent  Office  previous  to  said 
publication,  and  retain  one  hundred  copies  for  the  Patent 
Office  and  nine  hundred  copies  to  be  deposited  in  the  library 
of  Congress,  for  such  distribution  as  may  be  hereafter  directed  ; 
'and  that  one  thousand  dollars,  if  necessary,  be  appropriated, 
out  of  the  patent  fund,  to  defray  the  expense  of  the  same. 

SECTION  4.  And  be  it  further  enacted,  That  the  sum  of 
three  thousand  six  hundred  and  fifty-nine  dollars  and  twenty- 
two  cents  be,  and  is  hereby,  appropriated  from  the  patent  fund, 
to  pay  for  the  use  and  occupation  of  rooms  in  the  City  Hall  by 
the  Patent  Office. 

SECTION  5.  And  be  it  further  enacted,  That  the  sum  of 
one  thousand  dollars  be  appropriated  from  the  patent  fund,  to 
be  expended  under  the  direction  of  the  Commissioner,  for 
the  purchase  of  necessary  books  for  the  library  of  the  Patent 
Office. 

SECTION  6.  And  he  it  further  enacted,  That  no  person  shall 
be  debarred  from  receiving  a  patent  for  any  invention  or  dis- 
covery, as  provided  in  the  act  approved  on  the  fourth  day  of 
July,  one  thousand  eight  hundred  and  thirty-six,  to  which  this 
is  additional,  by  reason  of  the  same  having  been  patented  in  a 
foreign  country  more  than  six  months  prior  to  his  application  : 
Provided,  That  the  same  shall  not  have  been  introduced  into 
public  and  common  use  in  the  United  States,  prior  to  the  ap- 
plication for  such  patent :  And  provided  also.  That  in  all  cases 
every  such  patent  shall  be  limited  to  the  term  of  fourteen  years 
from  the  date  or  publication  of  such  foreign  letters-patent. 

SECTION  7.  And  be  it  further  enacted,  That  every  person  or 
corporation  who  has,  or  shall  have,  purchased  or  constructed 
any  newly  invented  machine,  manufacture,  or  composition  of 
matter,  prior  to  the  application  by  the  inventor  or  discoverei 
for  a  patent,  shall  be  held  to  possess  the  right  to  use,  and  vend 
to  others  to  be  used,  the  specific  machine,  manufacture,  01 


THE  PATENT  ACT  OF  1839.  609 

composition  of  matter  so  made  or  purchased,  without  liability 
therefor  to  the  inventor,  or  any  other  person  interested  in  such 
invention  ;  and  no  patent  shall  be  held  to  be  invalid,  by  reason  of 
such  purchase,  sale,  or  use  prior  to  the  application  for  a  patent  as 
aforesaid,  except  on  proof  of  abandonment  of  such  invention 
to  the  public  ;  or  that  such  purchase,  sale,  or  prior  use  has 
been  for  more  than  two  years  prior  to  such  application  for  a 
patent. 

SECTION  8.  And  be  it  further  enacted.  That  so  much  of  the 
eleventh  section  of  the  above  recited  act  as  requires  the  payment 
of  three  dollars  to  the  Commissioner  of  Patents  for  recording 
any  assignment,  grant,  or  conveyance  of  the  whole  or  any  part 
of  the  interest  or  right  under  any  patent,  be,  and  the  same  is 
hereby,  repealed  ;  and  all  such  assignments,  grants,  and  convey- 
ances shall,  in  future,  be  recorded,  without  any  charge  what- 
ever. 

SECTION  10.  And  be  it  further  enacted,  That  the  provisions 
of  the  sixteenth  section  of  the  before-recited  act  shall  extend 
to  all  cases  where  patents  are  refused  for  any  reason  whatever, 
either  by  the  Commissioner  of  Patents  or  by  the  Chief  Justice 
of  the  District  of  Columbia,  upon  appeals  from  the  decision  of 
said  Commissioner,  as  well  as  where  the  same  shall  have  been 
refused  on  account  of,  or  by  reason  of,  interference  with  a  pre- 
viously existing  patent ;  and  in  all  cases  where  there  is*  no  op- 
posing party,  a  copy  of  the  bill  shall  be  served  upon  the  Com- 
missioner of  Patents,  when  the  whole  of  the  expenses  of  the 
proceeding  shall  be  paid  by  the  applicant,  whether  the  final 
decision  shall  be  in  his  favor  or  otherwise. 

SECTION  11.  And  be  it  further  enacted,  That  in  all  cases 
where  an  appeal  is  now  allowed  by  law  from  the  decision  of  the 
Commissioner  of  Patents  to  a  board  of  examiners,  provided  for 
in  the  seventh  section  of  the  act  to  which  this  is  additional,  the 
party,  instead  thereof,  shall  have  a  right  to  appeal  to  the 
Chief  Justice  of  the  district  court  of  the  United  States  for  the 
District  of  Columbia,  by  giving  notice  thereof  to  the  Commis- 
sioner, and  filing  in  the  Patent  Office,  within  such  time  as  the 
Commissioner  shall  appoint,  his  reasons  of  appeal  specifically 
set  forth  in  writing,  and  also  paying  into  the  Patent  Office,  to 


610  THE    PATENT    STATUTES. 

the  credit  of  the  patent  fund,  the  sum  of  twenty-five  dollars. 
And  it  shall  be  the  duty  of  said  Chief  Justice,  on  petition,  to 
hear  and  determine  all  such  appeals,  and  to  revise  such  decisions 
in  a  summary  way,  on  the  evidence  produced  before  the  Com- 
missioner, at  such  early  and  convenient  time  as  he  may  appoint, 
first  notifying  the  Commissioner  of  the  time  and  place  of  hear- 
ing, whose  duty  it  shall  be  to  give  notice  thereof  to  all  parties 
who  appear  to  be  interested  therein,  in  such  manner  as  said 
judge  shall  prescribe.  The  Commissioner  shall  also  lay  before 
the  said  judge  all  the  original  papers  and  evidence  in  the  case, 
together  with  the  grounds  of  his  decision,  fully  set  forth  in 
writing,  touching  all  the  points  involved  by  the  reasons  of 
appeal,  to  which  the  revision  shall  be  confined.  And  at  the 
request  of  any  party  interested,  or  at  the  desire  of  the  judge, 
the  Commissioner  and  the  examiners  in  the  Patent  Office  may  be 
examined  under  oath,  in  explanation  of  the  principles  of  the 
machine  or  other  thing  for  which  a  patent,  in  such  case  is 
prayed  for.  And  it  shall  be  the  duty  of  said  judge,  after  a  hear- 
ing of  any  such  case,  to  return  all  the  papers  to  the  Commis- 
sioner, with  a  certificate  of  his  proceedings  and  decision,  which 
shall  be  entered  of  record  in  the  Patent  Office  ;  and  sucn  de- 
cision, so  certified,  shall  govern  the  further  proceedings  of  the 
Commissioner  in  such  case  :  Provided  however,  That  no  opinion 
or  decision  of  the  judge  in  any  such  case  shall  preclude  any 
person  interested  in  favor  or  against  the  validity  of  any  patent 
which  has  been  or  may,  hereafter  be  granted  from  the  right  to 
contest  the  same  in  any  judicial  court,  in  any  action  in  which 
its  validity  may  come  in  question. 

SECTION  12.  And  be  it  further  enacted,  That  the  Commis- 
sioner of  Patents  shall  have  power  to  make  all  such  regulations, 
in  respect  to  the  taking  of  evidence  to  be  used  in  contested 
cases  before  him,  as  may  be  just  and  reasonable.  And  so  much 
of  the  act  to  which  this  is  additional,  as  provides  for  a  board 
of  examiners,  is  hereby  repealed. 

SECTION  13.  And  be  it  further  enacted,  That  there  be  paid 
annually,  out  of  the  patent  fund,  to  the  said  Chief  Justice,  in 
consideration  of  the  duties  herein  imposed,  the  sum  of  one 
hundred  dollars. 


THE   PATENT   ACT   OF    1842.  611 

APPROVED  March  3,  1839. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT    ACT   OF    1842. 
5  STATUTES  AT  LARGE,  543. 

An  Act  in  addition  to  an  act  to  promote  the  progress  of  the 
useful  arts,  and  to  repeal  all  acts  and  parts  of  acts  hereto- 
fore made  for  that  purpose. 

SECTION  1.  Be  it  enacted  by  the  Senate  mid  House  of  Rep. 
resentatwes  of  the  United  States  of  America  in  Congress  as- 
sembled. That  the  Treasurer  of  the  United  States  be,  and  he 
hereby  is,  authorized  to  pay  back,  out  of  the  patent  fund,  any 
sum  or  sums  of  money,  to  any  person  who  shall  have  paid  the 
same  into  the  Treasury,  or  to  any  receiver  or  depositary  to  the 
credit  of  the  Treasurer,  as  for  fees  accruing  at  the  Patent 
Office  through  mistake,  and  which  are  not  provided  to  be  paid 
by  existing  laws,  certificate  thereof  being  made  to  the  said 
Treasurer  by  the  Commissioner  of  Patents. 

SECTION  2.  And  be  it  further  enacted,  That  the  third  section 
of  the  act  of  March,  eighteen  hundred  and  thirty -seven,  which 
authorizes  the  renewing  of  patents  lost  prior  to  the  fifteenth  of 
December,  eighteen  hundred  and  thirty-six,  is  extended  to 
patents  granted  prior  to  said  fifteenth  day  of  December,  though 
they  may  have  been  lost  subsequently  :  Provided  however, 
The  same  shall  not  have  been  recorded  anew  under  the  provi- 
sions of  said  act. 

SECTION  3.  And  be  it  further  enacted,  That  any  citizen  or 
citizens,  or  alien  or  aliens,  having  resided  one  year  in  the  United 
States,  and  taken  the  oath  of  his  or  their  intention  to  become 
a  citizen  or  citizens,  who  by  his,  her,  or  their  own  industry, 
genius,  efforts,  and  expense,  may  have  invented  or  pro- 
duced any  new  and  original  design  for  a  manufacture, 
whether  of  metal  or  other  material  or  materials,  or  any  new 
and  original  design  for  the  printing  of  woollen,  silk,  cotton,  or 
other  fabrics,  or  any  new  and  original  design  for  a  bust,  statue, 
or  bas-relief  or  composition  in  alto  or  basso  relievo,  or  any  new 


612  THE    PATENT    STATUTES. 

and  original  impression  or  ornament,  or  to  be  placed  on  any 
article  of  manufacture,  the  same  being  formed  in  marble  or 
other  material,  or  any  new  and  useful  pattern,  or  print,  or 
picture,  to  be  either  worked  into  or  worked  on,  or  printed  or 
painted  or  cast  or  otherwise  fixed  on,  any  article  of  manu- 
facture, or  any  new  and  original  shape  or  configuration  of  any 
article  of  manufacture  not  known  or  used  by  others  before  his, 
her,  or  their  invention  or  production  thereof,  and  prior  to  the 
time  of  his,  her,  or  their  application  for  a  patent  therefor,  and 
who  shall  desire  to  obtain  an  exclusive  property  or  right  therein 
to  make,  use.  and  sell  and  vend  the  same,  or  copies  of  the  same, 
to  others,  by  them  to  be  made,  used,  and  sold,  may  make  ap- 
plication in  writing  to  the  Commissioner  of  Patents  expressing 
such  desire,  and  the  Commissioner,  on  due  proceedings  had, 
may  grant  a  patent  therefor,  as  in  the  case  now  of  application 
for  a  patent :  Provided,  That  the  fee  in  such  cases,  which  by 
the  now  existing  laws  would  be  required  of  the  particular  ap- 
plicant, shall  be  one  half  the  sum,  and  that  the  duration  of 
said  patent  shall  be  seven  years,  and  that  all  the  regulations  and 
provisions  which  now  apply  to  the  obtaining  or  protection  of 
patents  not  inconsistent  with  the  provisions  of  this  act  shall 
apply  to  applications  under  this  section. 

SECTION  4.  And  be  it  further  enacted,  That  the  oath  required 
for  applicants  for  patents  may  be  taken,  when  the  applicant  is 
not,  for  the  time  being,  residing  in  the  United  States,  before 
any  minister,  plenipotentiary,  charge  d'affaires,  consul,  or 
commercial  agent  holding  commission  under  the  government 
of  the  United  States,  or  before  any  notary  public  of  the  foreign 
country  in  which  such  applicant  may  be. 

SECTION  5.  And  ~be  it  further  enacted,  That  if  any  person  or 
persons  shall  paint  or  print  or  mould,  cast,  carve,  or  engrave, 
or  stamp,  upon  anything  made,  used,  or  sold,  by  him,  for 
the  sole  making  or  selling  which  he  hath  not  or  shall  not  have 
obtained  letters-patent,  the  name  or  any  imitation  of  the 
name  of  any  other  person  who  hath  or  shall  have  obtained 
letters-patent  for  the  sole  making  and  vending  of  such  thing, 
without  consent  of  such  patentee,  or  his  assigns  or  legal  rep- 
resentatives ;  or  if  any  person,  upon  any  such  thing  not  having 


THE  PATENT  ACT  OF  1842.  613 

been  purchased  from  the  patentee,  or  some  person  who  pur- 
chased it  from  or  under  such  patentee, or  not  having  the  license  or 
consent  of  such  patentee,  or  his  assigns  or  legal  representatives, 
shall  write,  paint,  print,  mould,  cast,  carve,  engrave,  stamp, 
or  otherwise  make  or  affix  the  word  ' '  patent, ' '  or  the  words 
"letters-patent,"  or  the  word  "patentee,"  or  any  word  or 
words  of  like  kind,  meaning,  or  import,  with  the  view  or  in- 
tent of  imitating  or  counterfeiting  the  stamp,  mark,  or  other 
device,  of  the  patentee,  or  shall  affix  the  same,  or  any  word, 
stamp,  or  device,  of  like  import,  on  any  unpatented  article,  for 
the  purpose  of  deceiving  the  public,  he,  she,  or  they,  so  of- 
fending, shall  be  liable  for  such  offence  to  a  penalty  of  not  less 
than  one  hundred  dollars,  with  costs,  to  be  recovered  by  action 
in  any  of  the  circuit  courts  of  the  United  States,  or  in  any  of 
the  district  courts  of  the  United  States  having  the  powers  and 
jurisdiction  of  a  circuit  court  ;  one  half  of  which  penalty,  as 
recovered,  shall  be  paid  to  the  patent  fund,  and  the  other  half 
to  any  person  or  persons  who  shall  sue  for  the  same. 

SECTION  6.  And  be  it  further  enacted,  That  all  patentees 
and  assignees  of  patents  hereafter  granted  are  hereby  required 
to  stamp,  engrave,  or  cause  to  be  stamped  or  engraved,  on 
each  article  vended,  or  offered  for  sale,  the  date  of  the  patent ; 
and  if  any  person  or  persons,  patentees,  or  assignees,  shall 
neglect  to  do  so,  he,  she,  or  they  shall  be  liable  to  the  same 
penalty,  to  be  recovered  and  disposed  of  in  the  manner  speci- 
fied in  the  foregoing  fifth  section  of  this  act. 

APPROVED  August  29,  1842. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


PATENT  ACT  OF  1848. 
9  STATUTES  AT  LARGE,  231. 

An  Act  to  provide  additional  Examiners  in  the  Patent  Office, 
and  for  other  Purposes. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 


614  THE    PATENT    STATUTES. 

• 

sembled,  That  there  shall  be  appointed,  in  the  manner  provided 
in  the  second  section  of  the  act  entitled  "  An  Act  to  promote 
"the  progress  of  useful  arts,  and  to  repeal  all  acts  and  parts  of 
acts  heretofore  made  for  that  purpose, ' '  approved  July  fourth, 
eighteen  hundred  and  thirty-six,  two  principal  examiners,  and 
two  assistant  examiners,  in  addition  to  the  number  of  ex- 
aminers now  employed  in  the  Patent  Office  ;  and  that  hereafter 
each  of  the  principal  examiners  employed  in  the  Patent  Office 
shall  receive  an  annual  salary  of  twenty-five  hundred  dollars, 
and  each  of  the  assistant  examiners  an  annual  salary  of  fifteen, 
hundred  dollars  :  Provided,  That  the  power  to  extend  patents, 
now  vested  in  the  board  composed  of  the  Secretary  of  State, 
Commissioner  of  Patents,  and  Solicitor  of  the  Treasury,  by  the 
eighteenth  section  of  the  act  approved  July  fourth,  eighteen 
hundred  and  thirty-six,  respecting  the  Patent  Office,  shall  here- 
after be  vested  solely  in  the  Commissioner  of  Patents  ;  and 
when  an  application  is  made  to  him  for  the  extension  of  a 
patent  according  to  said  eighteenth  section,  and  sixty  days' 
notice  given  thereof,  he  shall  refer  the  case  to  the  principal 
examiner  having  charge  of  the  class  of  inventions  to  which  said 
case  belongs,  who  shall  make  full  report  to  said  Commissioner 
of  the  said  case,  and  particularly  whether  the  invention  or  im- 
provement secured  in  the  patent  was  new  and  patentable  when 
patented  ;  and  thereupon  the  said  Commissioner  shall  grant  or 
refuse  the  extension  of  said  patent,  upon  the  same  principles 
and  rules  that  have  governed  said  board  ;  but  no  patent  shall 
be  extended  for  a  longer  term  than  seven  years. 

SECTION  2.  And  l)e  it  further  enacted,  That  hereafter  the 
Commissioner  of  Patents  shall  require  a  fee  of  one  dollar  for 
recording  any  assignment,  grant,  or  conveyance  of  the  whole 
or  any  part  of  the  interest  in  letters-patent,  or  power  of  at- 
torney, or  license  to  make  or  use  the  thing  patented,  when 
such  instrument  shall  not  exceed  three  hundred  words  ;  the 
sum  of  two  dollars  when  it  shall  exceed  three  hundred  and  shall 
not  exceed  one  thousand  words  ;  and  the  sum  of  three  dollars 
when  it  shall  exceed  one  thousand  words  ;  which  fees  shall  in 
all  cases  be  paid  in  advance. 

SECTION  3.  And  be  it  further  enacted,  That  there  shall  be 


THE    PATENT   ACT   OF    1848.  615 

* 

appointed  in  manner  aforesaid,  two  clerks,'to  be  employed  in 
copying  and  recording,  and  in  other  services  in  the  Patent 
Office,  who  shall  each  be  paid  a  salary  of  one  thousand  two 
hundred  dollars  per  annum. 

SECTION  4.  And  be  it  further  enacted,  That  the  Commis- 
sioner of  Patents  is  hereby  authorized  to  send  by  mail,  free  of 
postage,  the  annual  reports  of  the  Patent  Office,  in  the  same 
manner  in  which  he  is  empowered  to  send  letters  and  packages 
relating  to  the  business  of  the  Patent  Office. 

APPROVED  May  27,  1848. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


.PATENT   ACT   OF   1849. 

9  STATUTES  AT  LARGE,  395. 

Section  2  of  the  Act  entitled  "  An  Act  to  establish  the  Home 
Department,  and  to  provide  for  the  Treasury  Department 
an  Assistant  Secretary  of  the  Treasury  and  a  Commissioner 
of  the  Customs." 

SECTION  2.  And  be  it  further  enacted,  That  the  Secretary  of 
the  Interior  shall  exercise  and  perform  all  the  acts  of  supervi- 
sion and  appeal  in  regard  to  the  office  of  Commissioner  of  Pat- 
ents, now  exercised  by  the  Secretary  of  State  ;  and  the  said  Sec- 
retary of  the  Interior  shall  sign  all  requisitions  for  the  advance 
or  payment  of  money  out  of  the  Treasury  on  estimates  or  ac- 
counts, subject  to  the  same  adjustment  or  control  now  exercised 
on  similar  estimates  or  accounts  by  the  First  or  Fifth  Auditor 
and  First  Comptroller  of  the  Treasury. 

APPROVED  March  3,  1849. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT   OF  1852. 

10  STATUTES  AT  LARGE,  75. 

An  Act  in  addition  to  "An  Act  to  Promote  the  Progress  «>f 
the  Useful  Arts." 


616  THE    PATENT    STATUTES. 

SECTION  1 .  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  appeals  provided  for  in  the  eleventh  section  of  the 
act  entitled  An  Act  in  addition  to  an  act  to  promote  the  prog- 
ress of  the  useful  arts,  approved  March  the  third,  eighteen  hun- 
dred and  thirty-nine,  may  also  be  made  to  either  of  the  assistant 
judges  of  the  Circuit  Court  of  the  District  of  Columbia,  and 
all  the  powers,  duties,  and  responsibilities  imposed  by  the  afore- 
said act,  and  conferred  upon  the  chief  judge,  are  hereby  im- 
posed and  conferred  upon  each  of  the  said  assistant  judges. 

SECTION  2.  And  be  it  further  enacted,  That  in  case  appeals 
shall  be  made  to  the  said  chief  judge,  or  to  either  of  the  said 
assistant  judges,  the  Commissioner  of  Patents  shall  pay  to  such 
chief  judge  or  assistant  judge  the  sum  of  twenty-five  dollars, 
required  to  be  paid  by  the  appellant  into  the  Patent  Office  by 
the  eleventh  section  of  said  act,  on  said  appeal. 

SECTION  3.  And  be  it  further  enacted,  That  section  thirteen 
of  the  aforesaid  act,  approved  March  the  third,  eighteen  hun- 
dred and  thirty-nine,  is  hereby  repealed. 

APPROVED  August  30,  1852. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT   OF   FEBRUARY   18,    1861. 

12  STATUTES  AT  LARGE,   130. 
An  Act  to  extend  the  right  of  appeal  from  the  decisions  of 

Circuit  Courts  to  the  Supreme  Court  of  the  United  States. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  from  all  judgments  and  decrees  of  any  Circuit 
Court  rendered  in  any  action,  suit,  controversy,  or  case,  at  law 
or  in  equity,  arising  under  any  law  of  the  United  States  grant- 
ing or  confirming  to  authors  the  exclusive  right  to  their  respec- 
tive writings,  or  to  inventors  the  exclusive  right  to  their  inven- 
tions or  discoveries,  a  writ  of  error  or  appeal,  as  the  case  may 
require,  shall  lie,  at  the  instance  of  either  party,  to  the  Su- 
preme Court  of  the  United  States,  in  the  same  manner  and 


THE  PATENT  ACT  OF  1861.  617 

under  the  same  circumstances  as  is  now  provided  by  law  in 
other  judgments  and  decrees  of  such  circuit  courts,  without 
regard  to  the  sum  or  value  in  controversy  in  the  action. 
APPROVED  February  18,  1861. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   ACT   OF  MAKCH   2,    1861. 

12  STATUTES  AT  LARGE,  246. 
An  Act  in  Addition  to  "An  Act  to  promote  the  Progress  of 

the  useful  Arts." 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  the  Commissioner  of  Patents  may  establish  rules 
for  taking  affidavits  and  depositions  required  in  cases  pending 
in  the  Patent  Office,  and  such  affidavits  and  depositions  may  be 
taken  before  any  justice  of  the  peace,  or  other  officer  authorized 
by  law  to  take  depositions  to  be  used  in  the  courts  of  the 
United  States,  or  in  the  State  courts  of  any  State  where  such 
officer  shall  reside  ;  and  in  any  contested  case  pending  in  the 
Patent  Office  it  shall  be  lawful  for  the  clerk  of  any  court  of  the 
United  States  for  any  district  or  Territory,  and  he  is  hereby  re- 
quired, upon  the  application  of  any  party  to  such  contested 
case,  or  the  agent  or  attorney  of  such  party,  to  issue  subpoenas 
for  any  witnesses  residing  or  being  within  the  said  district  or 
Territory,  commanding  such  witnesses  to  appear  and  testify  be- 
fore any  justice  of  the  peace,  or  other  officer  as  aforesaid,  resid- 
ing within  the  said  district  or  Territory,  at  any  time  and  place 
in  the  subpoena  to  be  stated  ;  and  if  any  witness,  after  being 
duly  served  with  such  subpoena,  shall  refuse  or  neglect  to  ap- 
pear, or,  after  appearing,  shall  refuse  to  testify  (not  being 
privileged  from  giving  testimony),  such  refusal  or  neglect  being 
proved  to  the  satisfaction  of  any  judge  of  the  court  whose  clerk 
shall  have  issued  such  subpoena,  said  judge  may  thereupon  pro- 
ceed to  enforce  obedience  to  the  process,  or  to  punish  the  diso- 
bedience in  like  manner  as  any  court  of  the  United  States  may 
do  in  case  of  disobedience  to  process  of  subpoena  ad  testifican- 


618  THE    PATENT    STATUTES. 

dum  issued  by  such  court ;  and  witnesses  in  such  cases  shall  be 
allowed  the  same  compensation  as  is  allowed  to  witnesses  at- 
tending the  courts  of  the  United  States  :  Provided,  That  no 
witness  shall  be  required  to  attend  at  any  place  more  than 
forty  miles  from  the  place  where  the  subpoena  shall  be  served 
upon  him  to  give  a  deposition  under  this  law  :  Provided  also, 
That  no  witness  shall  be  deemed  guilty  of  contempt  for  refus- 
ing to  disclose  any  secret  invention  made  or  owned  by  him  : 
And  provided  further,  That  no  witness  shall  be  deemed  guilty 
of  contempt  for  disobeying  any  subpoana  directed  to  him  by 
virtue  of  this  act,  unless  his  fees  for  going  to,  returning  from, 
and  one  day's  attendance  at  the  place  of  examination,  shall  be 
paid  or  tendered  to  him  at  the  time  of  the  service  of  the 
subpo3na. 

SECTION  2.  And  ~be  it  further  enacted.  That  for  the  purposes 
of  securing  greater  uniformity  of  action  in  the  grant  and  refusal 
of  letters-patent,  there  shall  be  appointed  by  the  President,  by 
and  with  the  advice  and  consent  of  the  Senate,  three  examiners 
in  chief,  at  an  annual  salary  of  three  thousand  dollars  each,  to 
be  composed  of  persons  of  competent  legal  knowledge  and 
scientific  ability,  whose  duty  it  shall  be,  on  the  written  petition 
of  the  applicant  for  that  purpose  being  filed,  to  revise  and  de- 
termine upon  the  validity  of  decisions  made  by  examiners  when 
adverse  to  the  grant  of  letters-patent ;  and  also  to  revise  and 
determine  in  like  manner  upon  the  validity  of  the  decisions  of 
examiners  in  interference  cases,  and  when  required  by  the 
Commissioner  in  applications  for  the  extension  of  patents,  and 
to  perform  such  other  duties  as  may  be  assigned  to  them  by 
the  Commissioner ;  that  from  their  decisions  appeals  may  be 
taken  to  the  Commissioner  of  Patents  in  person,  upon  pay- 
ment of  the  fee  hereinafter  prescribed  ;  that  the  said  examiners 
in  chief  shall  be  governed  in  their  action  by  the  rules  to  be 
prescribed  by  the  Commissioner  of  Patents. 

SECTION  3.  And  be  it  further  enacted,  That  no  appeal  shall 
be  allowed  to  the  examiners  in  chief  from  the  decisions  of  the 
primary  examiners,  except  in  interference  cases,  until  after  the 
application  shall  have  been  twice  rejected  ;  and  the  second 
examination  of  the  application  by  the  primary  examiner  shall 


THE  PATENT  ACT  OF  1861.  619 

not  be  had  until  the  applicant,  in  view  of  the  references  given 
on  the  first  rejection,  shall  have  renewed  the  oath  of  invention, 
as  provided  for  in  the  seventh  section  of  the  act  entitled  "  An 
act  to  promote  the  progress  of  the  useful  arts,  and  to  repeal 
all  acts  and  parts  of  acts  heretofore  made  for  that  purpose/' 
approved  July  fourth,  eighteen  hundred  and  thirty-six. 

SECTION  4.  And  be  it  further  enacted,  That  the  salary  of  the 
Commissioner  of  Patents,  from  and  after  the  passage  of  this 
act,  shall  be  four  thousand  five  hundred  dollars  per  annum,  and 
the  salary  of  the  chief  clerk  of  the  Patent  Office  shall  be  two 
thousand  five  hundred  dollars,  and  the  salary  of  the  librarian 
of  the  Patent  Office  shall  be  eighteen  hundred  dollars. 

SECTION  5.  And  be  it  further  enacted,  That  the  Commissioner 
of  Patents  is  authorized  to  restore  to  the  respective  applicants, 
or  when  not  removed  by  them,  to  otherwise  dispose  of  such  of 
the  models  belonging  to  rejected  applications  as  he  shall  not 
think  necessary  to  be  preserved.  The  same  authority  is  also 
given  in  relation  to  all  models  accompanying  applications  for 
designs.  He  is  further  authorized  to  dispense  in  future  with 
models  of  designs  when  the  design  can  be  sufficiently  repre- 
sented by  a  drawing. 

SECTION  6.  And  be  it  further  enacted,  That  the  tenth  section 
of  the  act  approved  the  third  of  March,  eighteen  hundred  and 
thirty-seven,  authorizing  the  appointment  of  agents  for  the 
transportation  of  models  and  specimens  to  the  Patent  Office, 
is  hereby  repealed. 

SECTION  7.  And  be  it  further  enacted,  That  the  Commis- 
sioner is  further  authorized,  from  time  to  time,  to  appoint,  in 
the  manner  already  provided  for  by  law,  such  an  additional  num- 
ber of  principal  examiners,  first  assistant  examiners,  and  sec- 
ond assistant  examiners  as  may  be  required  to  transact  the 
current  business  of  the  office  with  despatch,  provided  the 
whole  number  of  additional  examiners  shall  not  exceed  four 
of  each  class,  and  that  the  total  annual  expenses  of  the 
Patent  Office  shall  not  exceed  the  annual  receipts. 

SECTION  8.  And  be  it  further  enacted,  That  the  Commissioner 
may  require  all  papers  filed  in  the  Patent  Office,  if  not  cor- 
rectly, legibly,  and  clearly  written,  to  be  printed  at  the  cost  of 


620  THE    PATENT    STATUTES. 

the  parties  filing  such  papers  ;  and  for  gross  misconduct  he  may 
refuse  to  recognize  any  person  as  a  patent  agent,  either  gener- 
ally or  in  any  particular  case  ;  but  the  reasons  of  the  Commis- 
sioner for  such  refusal  shall  be  duly  recorded,  and  be  subject 
to  the  approval  of  the  President  of  the  United  States. 

SECTION  9.  And  ~be  it  further  enacted,  That  no  money  paid 
as  a  fee,  on  any  application  for  a  patent  after  the  passage  of 
this  act,  shall  be  withdrawn  or  refunded,  nor  shall  the  fee  paid 
on  filing  a  caveat  be  considered  as  part  of  the  sum  required  to 
be  paid  on  filing  a  subsequent  application  for  a  patent  for  the 
same  invention.  That  the  three  months'  notice  given  to  any 
caveator,  in  pursuance  of  the  requirements  of  the  twelfth  sec- 
tion of  the  act  of  July  fourth,  eighteen  hundred  and  thirty-six, 
shall  be  computed  from  the  day  on  which  such  notice  is  depos- 
ited in  the  post-office  at  Washington,  with  the  regular  time  for 
the  transmission  of  the  same  added  thereto,  which  time  shall  be 
indorsed  on  the  notice  ;  and  that  so  much  of  the  thirteenth 
section  of  the  act  of  Congress,  approved  July  fourth,  eighteen 
hundred  and  thirty-six,  as  authorizes  the  annexing  to  letters- 
patent  of  the  description  and  specification  of  additional  improve- 
ments is  hereby  repealed,  and  in  all  cases  where  additional  im- 
provements would  now  be  admissible,  independent  patents 
must  be  applied  for. 

SECTION  10.  And  be  it  further  enacted,  That  all  laws  now  in 
force  fixing  the  rates  of  the  Patent  Office  fees  to  be  paid,  and 
discriminating  between  the  inhabitants  of  the  United  States 
and  those  of  other  countries,  which  shall  not  discriminate 
against  the  inhabitants  of  the  United  States,  are  hereby  re- 
pealed, and  in  their  stead  the  following  rates  are  established  : — 

On  filing  each  caveat,  ten  dollars. 

On  filing  each  original  application  for  a  patent,  except  for  a 
design,  fifteen  dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  every  appeal  from  the  examiner  in  chief  to  the  Commis- 
sioner, twenty  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty 
•dollars. 

On   every  application  for  the  extension  of  a  patent,  fifty 


THE  PATENT  ACT  OF  1861.  621 

dollars  ;  and  fifty  dollars  in  addition,  on  the  granting  of  every 
extension. 

On  filing  each  disclaimer,  ten  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents 
per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  at- 
torney, and  other  papers,  of  three  hundred  words  or  under, 
one  dollar. 

For  recording  every  assignment,  and  other  papers,  over 
three  hundred  and  under  one  thousand  words,  two  dollars. 

For  recording  every  assignment  or  other  writing,  if  over 
one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  the 
same. 

SECTION  11.  And  be  it  further  enacted,  That  any  citizen  or 
citizens,  or  alien  or  aliens,  having  resided  one  year  in  the 
United  States,  and  taken  the  oath  of  his  or  their  intention  to 
become  a  citizen  or  citizens,  who,  by  his,  her,  or  their  own  in- 
dustry, genius,  efforts,  and  expense  may  have  invented  or 
produced  any  new  and  original  design,  or  a  manufacture, 
whether  of  metal  or  other  material  or  materials,  and  original 
design  for  a  bust,  statue,  or  bas-relief ,  or  composition  in  alto  or 
basso  relievo,  or  any  new  and  original  impression  or  ornament, 
or  to  be  placed  on  any  article  of  manufacture,  the  same  being 
formed  in  marble  or  other  material,  or  any  new  and  useful 
pattern,  or  print,  or  picture,  to  be  either  worked  into  or 
worked  on,  or  printed,  or  painted,  or  cast,  or  otherwise  fixed 
on  any  article  of  manufacture,  or  any  new  and  original  shape 
or  configuration  of  any  article  of  manufacture,  not  known  or 
used  by  others  before  his,  her,  or  their  invention  or  production 
thereof,  and  prior  to  the  time  of  his,  her,  or  their  application 
for  a  patent  therefor,  and  who  shall  desire  to  obtain  an  exclu- 
sive property  or  right  therein  to  make,  use,  and  sell,  and  vend 
the  same,  or  copies  of  the  same,  to  others,  by  them  to  be  made, 
used,  and  sold,  may  make  application,  in  writing,  to  theCom,- 
rnissionerof  Patents,  expressing  such  desire  ;  and  the  Commis- 
sioner, on  due  proceedings  had,  may  grant  a  patent  therefor, 
as  in  the  case  now  of  application  for  a  patent,  for  the  term  of 


•622  THE    PATENT    STATUTES. 

three  and  one  half  years,  or  for  the  term  of  seven  years,  or  for 
the  term  of  fourteen  years,  as  the  said  applicant  may  elect  in 
tis  application  :  Provided,  That  the  fee  to  be  paid  in  such 
application  shall  be  for  the  term  of  three  years  and  six  months, 
ten  dollars,  for  seven  years,  fifteen  dollars,  and  for  fourteen 
years,  thirty  dollars  :  And  provided,  That  the  patentees  of 
designs  under  this  act  shall  be  entitled  to  the  extension  of  their 
respective  patents  for  the  term  of  seven  years,  from  the  day  on 
which  said  patent  shall  expire,  upon  the  same  terms  and 
restrictions  as  are  now  provided  for  the  extension  of  letters- 
patent. 

SECTION  12.  And  T)e  it  further  enacted,  That  all  applications 
for  patents  shall  be  completed  and  prepared  for  examination 
within  two  years  after  the  filing  of  the  petition,  and  in  default 
thereof  they  shall  be  regarded  as  abandoned  by  the  parties 
thereto  ;  unless  it  be  shown  to  the  satisfaction  of  the  Commis- 
sioner of  Patents  that  such  delay  was  unavoidable  ;  and  all 
applications  now  pending  shall  be  treated  as  if  filed  after 
the  passage  of  this  act,  and  all  applications  for  the  extension  of 
patents  shall  be  filed  at  least  ninety  days  before  the  expiration 
thereof  ;  and  notice  of  the  day  set  for  the  hearing  of  the  case 
shall  be  published,  as  now  required  by  law,  for  at  least  sixty 
days. 

SECTION  13.  And  be  it  further  enacted,  That  in  all  cases 
where  an  article  is  made  or  vended  by  any  person  under  the 
protection  of  letters-patent,  it  shall  be  the  duty  of  such  person 
to  give  sufficient  notice  to  the  public  that  said  article  is  so 
patented,  either  by  fixing  thereon  the  word  "patented," 
together  with  the  day  and  year  the  patent  was  granted  ;  or 
when,  from  the  character  of  the  article  patented,  that  may  be 
impracticable,  by  enveloping  one  or  more  of  the  said  articles, 
and  affixing  a  label  to  the  package,  or  otherwise  attaching 
thereto  a  label  on  which  the  notice,  with  the  date,  is  printed  ; 
on  failure  of  which,  in  any  suit  for  the  infringement  of  letters- 
patent  by  the  party  failing  so  to  mark  the  article  the  right  to 
which  is  infringed  upon,  no  damage  shall  be  recovered  by  the 
plaintiff,  except  on  proof  that  the  defendant  was  duly  notified 
of  the  infringement,  and  continued  after  such  notice  to  make 


THE   PATENT   ACT   OF    1861. 

or  vend  the  article  patented.  And  the  sixth  section  of  the  act 
entitled  "An  act  in  addition  to  an  act  to  promote  the  prog- 
ress of  the  useful  arts,"  and  so  forth,  approved  the  twenty- 
ninth  day  of  August,  eighteen  hundred  and  forty-two,  be,  and 
the  same  is  hereby,  repealed. 

SECTION  14.  And  ~be  it  further  enacted,  That  the  Commis- 
sioner of  Patents  be,  and  he  is  hereby,  authorized  to  print,  or 
in  his  discretion  to  cause  to  be  printed,  ten  copies  of  the 
description  and  claims  of  all  patents  which  may  hereafter  be 
granted,  and  ten  copies  of  the  drawings  of  the  same,  when 
drawings  shall  accompany  the  patents  :  Provided,  The  cost  of 
printing  the  text  of  said  descriptions  and  claims  shall  not 
exceed,  exclusive  of  stationery,  the  sum  of  two  cents  per  hun- 
dred words  for  each  of  said  copies,  and  the  cost  of  the  drawing 
shall  not  exceed  fifty  cents  per  copy  ;  one  copy  of  the  above 
number  shall  be  printed  on  parchment  to  be  affixed  to  the 
letters-patent ;  the  work  shall  be  under  the  direction,  and  sub- 
ject to  the  approval,  of  the  Commissioner  of  Patents,  and  the 
expense  of  the  said  copies  shall  be  paid  for  out  of  the  patent  fund. 

SECTION  15.  And  be  it  further  enacted,  That  printed  copies 
of  the  letters-patent  of  the  United  States,  with  the  seal  of  the 
Patent  Office  affixed  thereto  and  certified  and  signed  by  the 
Commissioner  of  Patents,  shall  be  legal  evidence  of  the  con- 
tents of  said  letters-patent  in  all  cases. 

SECTION  16.  And  be  it  further  enacted,  That  all  patents 
hereafter  granted  shall  remain  in  force  for  the  term  of  seven- 
teen years  from  the  date  of  issue ;  and  all  extension  of  such 
patents  is  hereby  prohibited. 

SECTION  17.  And  be  it  further  enacted.  That  all  acts  and 
parts  of  acts  heretofore  passed,  which  are  inconsistent  with  the 
provisions  of  this  act,  be,  and  the  same  are  hereby,  repealed. 

APPROVED  March  2,  1861. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


624  THE    PATENT    STATUTES. 

PATENT    ACT   OF   1862. 

12  STATUTES  AT  LARGE,  583. 

Section  4  of  an  Act  making  supplemental  appropriations  for 

sundry  civil  expenses,  &c. 

SECTION  4.  For  the  fund  of  the  Patent  Office,  fifty  thousand 
eight  hundred  and  fifty-five  dollars  and  forty-nine  cents,  to 
supply  a  deficiency  existing  under  the  act  of  March  second, 
eighteen  hundred  and  sixty-one,  entitled  "  An  act  in  addition 
to  an  act  to  promote  the  progress  of  the  useful  arts"  :  Pro- 
vided, That  the  fourteenth  section  of  said  act  be,  and  the  same 
is  hereby,  repealed. 

APPROVED  July  16,  1862. 


PATENT  ACT   OF  1863. 
12  STATUTES  AT  LARGE,  796. 

An  Act  to  amend  an  Act  entitled  "  An  Act  to  promote  the 
Progress  of  the  useful  Arts. ' ' 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of -Rep- 
resentatives of  the  United  States  of  America,  in  Congress 
assembled,  That  so  much  of  section  seven  of  the  act  entitled 
"An  act  to  promote  the  progress  of  the  useful  arts,"  approved 
July  fourth,  eighteen  hundred  and  thirty-six,  as  requires  a 
renewal  of  the  oath,  be,  and  the  same  is  hereby,  repealed. 

SECTION  2.  And  be  it  further  enacted,  That,  whereas  the 
falling  off  of  the  revenue  of  the  Patent  Office  required  a  reduc- 
tion of  the  compensation  of  the  examiners  and  clerks,  or  other 
employees  in  the  office,  after  the  thirty-first  day  of  August, 
eighteen  hundred  and  sixty-one,  that  the  Commissioner  of 
Patents  be,  and  he  is  hereby,  authorized,  whenever  the  revenue 
of  the  office  will  justify  him  in  so  doing,  to  pay  them  such 
sums,  in  addition  to  what  they  shall  already  have  received,  as 
will  make  their  compensation  the  same  as  it  was  at  that  time. 

SECTION  3.  And  be  it  further  enacted,  That  every  patent 
shall  be  dated  as  of  a  day  not  later  than  six  months  after  the 
time  at  which  it  was  passed  and  allowed,  and  notice  thereof 
sent  to  the  applicant  or  his  agent.  And  if  the  final  fee  for 


THE  PATENT  ACT  OF  1863.  625 

such  patent  be  not  paid  within  the  said  six  months,  the  patent 
shall  be  withheld,  and  the  invention  therein  described  shall 
become  public  property  as  against  the  applicant  therefor  :  Pro- 
vided,  That  in  all  cases  where  patents  have  been  allowed  previ- 
ous to  the  passage  of  this  act,  the  said  six  months  shall  be  reck- 
oned from  the  date  of  such  passage. 

APPROVED  March  3,  1863. 

Kepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT  ACT  OF  1864. 
13  STATUTES  AT  LARGE,  194. 

An  Act  amendatory  of  an  Act  to  amend  an  Act  entitled  "  An 
Act  to  promote  the  Progress  of  the  Useful  Arts,"  ap- 
proved March  three,  eighteen  hundred  and  sixty- three. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  any 
person  having  an  interest  in  an  invention,  whether  as  the  in- 
ventor or  assignee,  for  which  a  patent  was  ordered  to  issue 
upon  the  payment  of  the  final  fee,  as  provided  in  section 
three  of  an  act  approved  March  three,  eighteen  hnndred  and 
sixty-three,  but  who  has  failed  to  make  payment  of  the  final 
fee,  as  provided  by  said  act,  shall  have  the  right  to  make 
the  payment  of  such  fee,  and  receive  the  patent  withheld  on 
account  of  the  non-payment  of  said  fee,  provided  such  pay- 
ment be  made  within  six  months  from  the  date  of  the  passage 
of  this  act  :  Provided,  That  nothing  herein  shall  be  so  con- 
strued as  to  hold  responsible  in  damages  any  persons  who 
have  manufactured  or  used  any  article  or  thing  for  which  a 
patent,  as  aforesaid,  was  ordered  to  be  issued. 

APPROVED  June  25,  1864. 

Eepealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


626  THE    PATENT    STATUTES. 

PATENT  ACT   OF  1865. 

13  STATUTES  AT  LAKGE,  533. 

An  Act  amendatory  of  "An  Act  to  amend  an  Act  entitled 
'An  Act  to  promote  the  Progress  of  the  useful  Arts, '  ap- 
proved March  three,  eighteen  hundred  and  sixty-three." 

Be  it  enacted  l>y  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That  any 
persons  having  an  interest  in  an  invention,  whether  as  inventor 
or  assignee,  for  which  a  patent  was  ordered  to  issue  upon  the 
payment  of  the  final  fee,  as  provided  in  section  three  of  an 
act  approved  March  three,  eighteen  hundred  and  sixty-three, 
but  who  has  failed  to  make  payment  of  the  final  fee  as  pro- 
vided in  said  act,  shall  have  the  right  to  make  an  application 
for  a  patent  for  his  invention,  the  same  as  in  the  case  of  an 
original  application,  provided  such  application  be  made  within 
two  years  after  the  date  of  the  allowance  of  the  original  appli- 
cation :  Provided,  That  nothing  herein  shall  be  so  construed 
as  to  hold  responsible  in  damages  any  persons  who  have  manu- 
factured or  used  any  article  or  thing  for  which  a  patent  afore- 
said was  ordered  to  issue.  This  act  shall  apply  to  all  cases  now 
in  the  Patent  Office,  and  also  to  such  as  shall  hereafter  be  filed. 
And  all  acts  or  parts  of  acts  inconsistent  with  this  act  are  here- 
by repealed. 

APPROVED  March  3,  1 865. 

Kepealed  July  8,  18TO.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT   STATUTE   OF   1866. 

14  STATUTES  AT  LAKGE,  76. 

An  Act  in  Amendment  of  an  Act  to  promote  the  Progress 
of  the  Useful  Arts,  and  the  Acts  in  Amendment  of  an 
Addition  thereto. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
upon  appealing  for  the  first  time  from  the  decision  of  the 
primary  examiner  to  the  examiners-in-chief  in  the  Patent 


THE  PATENT  ACT  OF  1866.  627 

Office,  the  appellant  shall  pay  a  fee  of  ten  dollars  into  the 
Patent  Office,  to  the  credit  of  the  patent  fund  :  and  no  appeal 
from  the  primary  examiner  to  the  examiners-in-chief  shall 
hereafter  be  allowed  until  the  appellant  shall  pay  said  fee. 

APPROVED  June  27,  1866. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


CONSOLIDATED   PATENT  ACT  OF  1870. 

16  STATUTES  AT  LARGE,  198. 

An  Act  to  revise,  consolidate,  and  amend  the  Statutes,  relating 
to  Patents  and  Copyrights. 

SECTION  1.  Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  assem- 
bled. That  there  shall  be  attached  to  the  Department  of  the 
Interior  the  office,  heretofore  established,  known  as  the  Patent 
Office,  wherein  all  records,  books,  models,  drawings,  specifi- 
cations, and  other  papers  and  things  pertaining  to  patents  shall 
be  safely  kept  and  preserved.  [See  Revised  Statutes,  Section 
475.] 

SECTION  2.  And  be  it  further  enacted,  That  the  officers  and 
employees  of  said  office  shall  continue  to  be  :  one  commissioner 
*of  patents,  one  assistant  commissioner,  and  three  examiners-in- 
chief,  to  be  appointed  by  the  President,  by  and  with  the  advice 
and  consent  of  the  Senate  ;  one  chief  clerk,  one  examiner  in 
charge  of  interferences,  twenty-two  principal  examiners, 
twenty-two  first  assistant  examiners,  twenty-two  second  assist- 
ant examiners,  one  librarian,  one  machinist,  five  clerks  of  class 
four,  six  clerks  of  class  three,  fifty  clerks  of  class  two,  forty- 
five  clerks  of  class  one,  and  one  messenger  and  purchasing 
clerk,  all  of  whom  shall  be  appointed  by  the  Secretary  of  the 
Interior,  upon  nomination  of  the  Commissioner  of  Patents. 
[See  Revised  Statutes,  Section  476.] 

SECTION  3.  And  be  it  further  enacted,  That  the  Secretary 
of  the  Interior  may  also  appoint,  upon  like  nomination,  such 
additional  clerks  of  classes  two  and  one,  and  of  lower  grades, 
copyists  of  drawings,  female  copyists,  skilled  laborers,  labor- 


628  THE    PATENT   STATUTES. 

ers  and  watchmen,  as  may  be  from  time  to  time  appropriated 
for  by  Congress.  [See  Kevised  Statutes,  Section  169.] 

SECTION  4.  And  be  it  further  enacted,  That  the  annual  sal- 
aries of  the  officers  and  employees  of  the  Patent  Office  shall 
be  as  follows  :— 

Of  the  commissioner  of  patents,  four  thousand  five  hundred 
dollars. 

Of  the  assistant  commissioner,  three  thousand  dollars. 

Of  the  examiners-in-chief,  three  thousand  dollars  each. 

Of  the  chief  clerk,  two  thousand  five  hundred  dollars. 

Of  the  examiner  in  charge  of  interferences,  two  thousand 
five  hundred  dollars. 

Of  the  principal  examiners,  two  thousand  five  hundred 
dollars  each. 

Of  the  first  assistant  examiners,  one  thousand  eight  hun- 
dred dollars  each. 

Of  the  second  assistant  examiners,  one  thousand  six  hundred 
dollars  each. 

Of  the  librarian,  one  thousand  eight  hundred  dollars. 

Of  the  machinist,  one  thousand  six  hundred  dollars. 

Of  the  clerks  of  class  four,  one  thousand  eight  hundred 
dollars  each. 

Of  the  clerks  of  class  three,  one  thousand  six  hundred  dol- 
lars each. 

Of  the  clerks  of  class  two,  one  thousand  four  hundred  dol- 
lars each. 

.  Of  the  clerks  of  class  one,  one  thousand  two  hundred  dollars 
each. 

Of  the  messenger  and  purchasing  clerk,  one  thousand  dollars. 

Of  laborers  and  watchmen,  seven  hundred  and  twenty  dol- 
lars each. 

Of  the  additional  clerks,  copyists  of  drawings,  female  copy- 
ists, and  skilled  laborers,  such  rates  as  may  be  fixed  by  the 
acts  making  appropriations  for  them.  [See  Revised  Statutes, 
Sections  477,  440,  and  167.] 

SECTION  5.  And  be  it  further  enacted,  That  all  officers  and 
employees  of  the  Patent  Office  shall,  before  entering  upon 
their  duties,  make  oath  or  affirmation  truly  and  faithfully  to 


THE   PATENT   ACT   OF    1870. 

execute  the  trusts  committed  to  them.     [See  Revised  Statutes, 
Sections  1756  and  1757.] 

SECTION  6.  And  J>e  it  further  enacted,  That  the  commis- 
sioner and  chief  clerk,  before  entering  upon  their  duties,  shall 
severally  give  bond,  with  sureties,-  to  the  Treasurer  of  the 
United  States,  the  former  in  the  sum  of  ten  thousand  dollars, 
and  the  latter  in  the  sum  of  five  thousand  dollars,  conditioned 
for  the  faithful  discharge  of  their  duties,  and  that  they  will 
render  to  the  proper  officers  of  the  treasury  a  true  account  of 
all  money  received  by  virtue  of  their  office.  [See  Revised 
Statutes,  Section  479.] 

SECTION  7.  And  ~be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  commissioner,  under  the  direction  of  the  Secretary 
of  the  Interior,  to  superintend  or  perform  all  the  duties  respect- 
ing the  granting  and  issuing  of  patents  which  herein  are,  or  may 
hereafter  be,  by  law  directed  to  be  done  ;  and  he  shall  have 
charge  of  all  books,  records,  papers,  models,  machines,  and 
other  things  belonging  to  said  office.  [See  Revised  Statutes, 
Section  481.] 

SECTION  8.  And  ~be  it  further  enacted,  That  the  commis- 
sioner may  send  and  receive  by  mail,  free  of  postage,  letters, 
printed  matter,  and  packages  relating  to  the  business  of  his 
•office,  including  Patent  Office  reports.  [See  19  Statutes  at 
Large,  Chap.  103,  Section  5,  p.  335  ;  and  20  Statutes  at 
Large,  Chap.  180,  Section  29,  p.  362.] 

SECTION  9.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  lay  before  Congress,  in  the  month  of  January,  an- 
nually, a  report,  giving  a  detailed  statement  of  all  moneys  re- 
ceived for  patents,  for  copies  of  records  or  drawings,  or  from 
any  other  source  whatever  ;  a  detailed  statement  of  all  expen- 
ditures for  contingent  and  miscellaneous  expenses  ;  a  list  of  all 
patents  which  were  granted  during  the  preceding  year,  desig- 
nating under  proper  heads  the  subjects  of  such  patents  ;  an 
alphabetical  list  of  the  patentees,  with  their  places  of  resi- 
dence ;  a  list  of  all  patents  which  have  been  extended  during 
the  year  ;  and  such  other  information  of  the  condition  of  the 
Patent  Office  as  may  be  useful  to  Congress  or  the  public. 
[See  Revised  Statutes,  Section  494.] 


630  THE   PATENT    STATUTES. 

SECTION  10.  And  be  it  further  enacted,  That  the  examiners- 
in-chief  shall  be  persons  of  competent  legal  knowledge  and 
scientific  ability,  whose  duty  it  shall  be,  on  the  written  peti- 
tion of  the  appellant,  to  revise  and  determine  upon  the  valid- 
ity of  the  adverse  decisions  of  examiners  upon  applications  for 
patents,  and  for  reissues  of  patents,  and  in  interference  cases  ; 
and  when  required  by  the  commissioner,  they  shall  hear  and 
report  upon  claims  for  extensions,  and  perform  such  other  like 
duties  as  he  may  assign  them.  [See  Revised  Statutes,  Sec- 
tion 482.] 

SECTION  11.  And  be  it  further  enacted,  That  in  case  of  the 
death,  resignation,  absence,  or  sickness  of  the  commissioner, 
his  duties  shall  devolve  upon  the  assistant  commissioner  until 
a  successor  shall  be  appointed,  or  such  absence  or  sickness  shall 
cease.  [See  Revised  Statutes,  Sections  177,  178,  and  179.] 

SECTION  12.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  cause  a  seal  to  be  provided  for  said  office,  with 
such  device  as  the  President  may  approve,  with  which  all  rec- 
ords or  papers  issued  from  said  office,  to  be  used  in  evidence, 
shall  be  authenticated.  [See  Revised  Statutes,  Section  478.] 

SECTION  13.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  cause  to  be  classified  and  arranged  in  suitable 
cases,  in  the  rooms  and  galleries  provided  for  that  purpose, 
the  models,  specimens  of  composition,  fabrics,  manufactures, 
works  of  art,  and  designs,  which  have  been  or  shall  be  deposit- 
ed in  said  office  ;  and  said  rooms  and  galleries  shall  be  kept 
open  during  suitable  hours  for  public  inspection.  [See  Re- 
vised Statutes,  Section  484.] 

SECTION  14.  And  be  it  further  enacted,  That  the  commis- 
sioner may  restore  to  the  respective  applicants  such  of  the 
models  belonging  to  rejected  applications  as  he  shall  not  think 
necessary  to  be  preserved,  or  he  may  sell  or  otherwise  dispose 
of  them  after  the  application  has  been  finally  rejected  for  one 
year,  paying  the  proceeds  into  the  treasury,  as  other  patent 
moneys  are  directed  to  be  paid.  [See  Revised  Statutes,  Sec- 
tion 485.] 

SECTION  15.  And  be  it  further  enacted,  That  there  shall  be 
purchased,  for  the  use  of  said  office,  a  library  of  such  scien- 


THE    PATENT   ACT   OF    1870.  631 

tific  works  and  periodicals,  both  foreign  and  American,  as  may 
aid  the  officers  in  the  discharge  of  their  duties,  not  exceeding 
the  amount  annually  appropriated  by  Congress  for  that  pur- 
pose. [See  Revised  Statutes,  Section  486.] 

SECTION  3  6.  And  be  it  further  enacted,  That  all  officers 
and  employees  of  the  Patent  Office  shall  be  incapable,  during 
the  period  for  which  they  shall  hold  their  appointments,  to 
acquire  or  take,  directly  or  indirectly,  except  by  inheritance 
or  bequest,  any  right  or  interest  in  any  patent  issued  by  said 
office.  [See  Revised  Statutes,  Section  480.] 

SECTION  17.  And  be  it  further  enacted.  That  for  gross  mis- 
conduct the  commissioner  may  refuse  to  recognize  any  person 
as  a  patent  agent,  either  generally  or  in  any  particular  case  ; 
but  the  reasons  for  such  refusal  shall  be  duly  recorded,  and  be 
subject  to  the  approval  of  the  Secretary  of  the  Interior.  [See 
Revised  Statutes,  Section  487.] 

SECTION  18.  And  be  it  further  enacted,  That  the  commis- 
sioner may  require  all  papers  filed  in  the  Patent  Office,  if  not 
correctly,  legibly  and  clearly  written,  to  be  printed  at  the  cost 
of  the  party  filing  them.  [See  Revised  Statutes,  Section 
488.] 

SECTION  19.  And  be  it  further  enacted,  That  the  commis- 
sioner, subject  to  the  approval  of  the  Secretary  of  the  Interi- 
or, may  from  time  to  time  establish  rules  and  regulations,  not 
inconsistent  with  law,  for  the  conduct  of  proceedings  in  the 
Patent  Office.  [See  Revised  Statutes,  Section  483.] 

SECTION  20.  And  be  it  further  enacted,  That  the  commis- 
sioner may  print  or  cause  to  be  printed  copies  of  the  specifica- 
tions of  all  letters-patent  and  of  the  drawings  of  the  same,  and 
copies  of  the  claims  of  current  issues,  and  copies  of  such  laws, 
decisions,  rules,  regulations,  and  circulars  as  may  be  necessary 
for  the  information  of  the  public.  [See  Revised  Statutes, 
Sections  489,  490,  and  491.] 

SECTION  21.  And  be  it  further  enacted,  That  all  patents 
shall  be  issued  in  the  name  of  the  United  States  of  America, 
under  the  seal  of  the  Patent  Office,  and  shall  be  signed  by  the 
Secretary  of  the  Interior  and  countersigned  by  the  commis- 
sioner, and  they  shall  be  recorded,  together  with  the  spociticn- 


632  THE    PATENT    STATUTES. 

tion,  in  said  office,  in  books  to  be  kept  for  that  purpose.  [See 
Ke vised  Statutes,  Section  4883.] 

SECTION  22.  And  be  it  further  enacted,  That  every  patent 
shall  contain  a  short  title  or  description  of  the  invention  or  dis- 
covery, correctly  indicating  its  nature  and  design,  and  a  grant 
to  the  patentee,  his  heirs  or  assigns,  for  the  term  of  seventeen 
years,  of  the  exclusive  right  to  make,  use,  and  vend  the  said 
invention  or  discovery  throughout  the  United  States  and  the 
Territories  thereof,  referring  to  the  specification  for  the  par- 
ticulars thereof  ;  and  a  copy  of  said  specifications  and  of  the 
drawings  shall  be  annexed  to  the  patent  and  be  a  part  there- 
of. [See  Revised  Statutes,  Section  4884.] 

SECTION  23.  And  be  it  further  enacted,  That  every  patent 
shall  date  as  of  a  day  not  later  than  six  months  from  the  time 
at  which  it  was  passed  and  allowed,  and  notice  thereof  was 
sent  to  the  applicant  or  his  agent  ;  and  if  the  final  fee  shall 
not  be  paid  within  that  period,  the  patent  shall  be  withheld. 
[See  Revised  Statutes,  Section  4885.] 

SECTION  24.  And  be  it  further  enacted,  That  any  person 
who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any  new 
and  useful  improvement  thereof,  not  known  or  used  by  others 
in  this  country,  and  not  patented,  or  described  in  any  printed 
publication  in  this  or  any  foreign  country,  before  his  inven- 
tion or  discovery  thereof,  and  not  in  public  use  or  on  sale  for 
more  than  two  years  prior  to  his  application,  unless  the  same 
as  proved  to  have  been  abandoned,  may,  upon  payment  of  the 
duty  required  by  law,  and  other  due  proceedings  had,  obtain 
a  patent  therefor.  [See  Revised  Statutes,  Section  488(5.] 

SECTION  25.  And  be  it  further  enacted,  That  no  person  shall 
be  debarred  from  receiving  a  patent  for  his  invention  or  dis- 
covery, nor  shall  any  patent  be  declared  invalid,  by  reason  of 
its  having  been  first  patented  or  caused  to  be  patented  in  a 
foreign  country  :  Provided,  The  same  shall  not  have  been 
introduced  into  public  use  in  the  United  States  for  more  than 
two  years  prior  to  the  application,  and  that  the  patent  shall 
expire  at  the  same  time  with  the  foreign  patent,  or,  if  there 
be  more  than  one,  at  the  same  time  with  the  one  having  the 


THE  PATENT  ACT  OF  1870.  633 

shortest  term  ;  but  in  no  case  shall  it  be  in  force  more  than 
seventeen  years.  [See  Revised  Statutes,  Section  4887.] 

SECTION  26.  And  be  it  further  enacted,  That  before  any 
inventor  or  discoverer  shall  receive  a  patent  for  his  invention 
or  discovery,  he  shall  make  application  therefor,  in  writing, 
to  the  commissioner,  and  shall  tile  in  the  Patent  Office  a  writ- 
ten description  of  the  same,  and  of  the  manner  and  process  of 
making,  constructing,  compounding,  and  using  it,  in  such  full, 
clear,  concise,  and  exact  terms  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains,  or  with  which  it  is 
most  nearly  connected,  to  make,  construct,  compound,  and 
use  the  same  ;  and  in  case  of  a  machine,  he  shall  explain  the 
principle  thereof,  and  the  best  mode  in  which  he  has  contem- 
plated apply  ing  that  principle  so  as  to  distinguish  it  from  other 
inventions  ;  and  he  shall  particularly  point  out  and  distinctly 
claim  the  part,  improvement,  or  combination  which  he  claims 
as  his  invention  or  discovery  ;  and  said  specification  and  claim 
shall  be  signed  by  the  inventor  and  attested  by  two  witnesses. 
[See  Revised  Statutes,  Section  4888.] 

SECTION  27.  And  be  it  further  enacted,  That  when  the  na- 
ture of  the  case  admits  of  drawings,  the  applicant  shall  furnish 
one  copy  signed  by  the  inventor  or  his  attorney  in  fact,  and 
attested  by  two  witnesses,  which  shall  be  filed  in  the  Patent 
Office  ;  and  a  copy  of  said  drawings,  to  be  furnished  by  the 
Patent  Office,  shall  be  attached  to  the  patent  as  part  of  the 
specification.  [See  Revised  Statutes,  Section  4889.] 

SECTION  28.  And  be  it  further  enacted,  That  when  the  in- 
vention or  discovery  is  of  a  composition  of  matter,  the  appli- 
cant, if  required  by  the  commissioner,  shall  furnish  specimens 
of  ingredients  and  of  the  composition,  sufficient  in  quantity 
for  the  purpose  of  experiment.  [See  Revised  Statutes,  Sec- 
tion 4890.] 

SECTION  29.  And  be  it  further  enacted,  That  in  all  cases 
which  admit  of  representation  by  model,  the  applicant,  if  re- 
quired by  the  commissioner,  shall  furnish  one  of  convenient 
size  to  exhibit  advantageously  the  several  parts  of  his  inven- 
tion or  discovery.  [See  Revised  Statutes,  Section  4891.] 

SECTION  30.  And  be  it  further  enacted,  That  the  applicant 


634  THE    PATENT    STATUTES. 

shall  make  oath  or  affirmation  that  he  does  verily  believe  him- 
self to  be  the  original  and  first  inventor  or  discoverer  of  the  art, 
machine,  manufacture,  composition,  or  improvement  for  which 
he  solicits  a  patent  :  that  he  does  not  know  and  does  not 
believe  that  the  same  was  ever  before  known  or  used  ;  and 
shall  state  of  what  country  he  is  a  citizen.  And  said  oath  or 
affirmation  may  be  made  before  any  person  within  the  United 
States  authorized  by  law  to  administer  oaths,  or,  when  the  ap- 
plicant resides  in  a  foreign  country,  before  any  minister, 
charge  d"1  affaires,  consul,  or  commercial  agent,  holding  com- 
mission under  the  government  of  the  United  States,  or  before 
any  notary  public  of  the  foreign  country  in  which  the  appli- 
cant may  be.  [See  Revised  Statutes,  Section  4892.] 

SECTION  31.  And  be  it  further  enacted,  That  on  the  filing 
of  any  such  application  and  the  payment  of  the  duty  required 
by  law,  the  commissioner  shall  cause  an  examination  to  be 
made  of  the  alleged  new  invention  or  discovery  ;  and  if  on 
such  examination  it  shall  appear  that  the  claimant  is  justly  en- 
titled to  a  patent  under  the  law,  and  that  the  same  is  suffi- 
ciently useful  and  important,  the  commissioner  shall  issue  a 
patent  therefor.  [See  Revised  Statutes,  Section  4893.] 

SECTION  32.  And  be  it  further  enacted,  That  all  applica- 
tions for  patents  shall  be  completed  and  prepared  for  examina- 
tion within  two  years  after  the  filing  of  the  petition,  and  in 
default  thereof,  or  upon  failure  of  the  applicant  to  prosecute 
the  same  within  two  years  after  any  action  therein,  of  which 
notice  shall  have  been  given  to  the  applicant,  they  shall  be  re- 
garded as  abandoned  by  the  parties  thereto,  unless  it  be  shown 
to  the  satisfaction  of  the  commissioner  that  such  delay  was  un- 
avoidable. [See  Revised  Statutes,  Section  4894.] 

SECTION  33.  And  be  it  further  enacted,  That  patents  may 
be  granted  and  issued  or  reissued  to  the  assignee  of  the  invent- 
or or  discoverer,  the  assignment  thereof  being  first  entered 
of  record  in  the  Patent  Office  ;  but  in  such  case  the  applica- 
tion for  the  patent  shall  be  made  and  the  specifications  sworn 
to  by  the  inventor  or  discoverer  ;  and  also,  if  he  be  living,  in 
case  of  an  application  for  reissue.  [See  Revised  Statutes, 
Section  4895.] 


THE  PATENT  ACT  OF  1870.  635 

SECTION  34.  And  be  it  further  enacted.  That  when  any 
person,  having  made  any  new  invention  or  discovery  for  which 
a  patent  might  have  been  granted,  dies  before  a  patent  is 
granted,  the  right  of  applying  for  and  obtaining  the  patent 
shall  devolve  on  his  executor  or  administrator,  in  trust  for  the 
heirs  at  law  of  the  deceased,  in  case  he  shall  have  died  intes- 
tate ;  or  if  he  shall  have  left  a  will,  disposing  of  the  same, 
then  in  trust  for  his  devisees,  in  as  full  manner  and  on  the 
same  terms  and  conditions  as  the  same  might  have  been 
claimed  or  enjoyed  by  him  in  his  lifetime  ;  and  when  the  ap- 
plication shall  be  made  by  such  legal  representatives,  the  oath 
or  affirmation  required  to  be  made  shall  be  so  varied  in  form 
that  it  can  be  made  by  them.  [See  Revised  Statutes,  Sec- 
tion 4896.] 

SECTION  35.  And  be  it  further  enacted,  That  any  person 
who  has  an  interest  in  an  invention  or  discovery,  whether  as 
inventor,  discoverer,  or  assignee,  for  which  a  patent  was 
ordered  to  issue  upon  the  payment  of  the  final  fee,  but  who 
has  failed  to  make  payment  thereof  within  six  months  from 
the  time  at  which  it  was  passed  and  allowed,  and  notice  there- 
of was  sent  to  the  applicant  or  his  agent,  shall  have  a  right  to 
make  an  application  for  a  patent  for  such  invention  or  discov- 
ery the  same  as  in  the  case  of  an  original  application  :  Pro- 
vided, That  the  second  application  be  made  within  two  years 
after  the  allowance  of  the  original  application.  But  no  person 
shall  be  held  responsible  in  damages  for  the  manufacture  or 
use  of  any  article  or  thing  for  which  a  patent,  as  aforesaid, 
was  ordered  to  issue,  prior  to  the  issue  thereof  :  And  pro- 
vided further,  That  when  an  application  for  a  patent  has  been 
rejected  or  withdrawn,  prior  to  the  passage  of  this  act,  the  ap- 
plicant shall  have  six  months  from  the  date  of  such  passage  to 
renew  his  application,  or  to  file  a  new  one  ;  and  if  he  omit  to 
do  either,  his  application  shall  be  held  to  have  been  aban- 
doned. Upon  the  hearing  of  such  renewed  applications  aban- 
donment shall  be  considered  as  a  question  of  fact.  [See  Re- 
vised Statutes,  Section  4897.] 

SECTION  36.  And  be  it  further  enacted,  That  every  patent 
or  any  interest  therein  shall  be  assignable  in  law,  by  an  instni- 


•636  THE    PATENT    STATUTES. 

ment  in  writing  ;  and  the  patentee  or  his  assigns  or  legal 
representatives  may,  in  like  manner,  grant  and  convey  an  ex- 
clusive right  under  his  patent  to  the  whole  or  any  specified 
part  of  the  United  States  ;  and  said  assignment,  grant,  or  con- 
veyance shall  be  void  as  against  any  subsequent  purchaser  or 
mortgagee  for  a  valuable  consideration,  without  notice,  unless 
it  is  recorded  in  the  Patent  Office  within  three  months  from 
the  date  thereof.  [See  Revised  Statutes,  Section  4898.] 

SECTION  37.  And  be  it  further  enacted,  That  every  person 
who  may  have  purchased  of  the  inventor,  or  with  his  knowl- 
edge and  consent  may  have  constructed  any  newly  invented  or 
discovered  machine,  or  other  patentable  article,  prior  to  the 
application  by  the  inventor  or  discoverer  for  a  patent,  or  sold 
or  used  one  so  constructed,  shall  have  the  right  to  use,  and 
vend  to  others  to  be  used,  the  specific  thing  so  made  or  pur- 
chased, without  liability  therefor.  [See  Revised  Statutes,  Sec- 
tion 4S99.J 

SECTION  38.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  all  patentees,  and  their  assigns  and  legal  representa- 
tives, and  of  all  persons  making  or  vending  any  patented  arti. 
«le  for  or  under  them,  to  give  sufficient  notice  to  the  public 
that  the  same  is  patented,  either  by  fixing  thereon  the  word 
kk  patented,"  together  with  the  day  and  year  the  patent  was 
granted  ;  or  when,  from  the  character  of  the  article,  this  can- 
not be  done,  by  fixing  to  it  or  to  the  package  wherein  one  or 
more  of  them  is  enclosed,  a  label  containing  the  like  notice  ; 
and  in  any  suit  for  infringement,  by  the  party  failing  so  to 
mark,  no  damages  shall  be  recovered  by  the  plaintiff,  except 
on  proof  that  the  defendant  was  duly  notified  of  the  infringe- 
ment, and  continued,  after  such  notice,  to  make,  use,  or  vend 
the  article  so  patented.  [See  Revised  Statutes,  Section 
4900.  J 

SECTION  39.  And  be  it  further  enacted,  That  if  any  person 
shall,  in  any  manner,  mark  upon  any  thing  made,  used,  or 
sold  by  him  for  which  he  has  not  obtained  a  patent,  the  name 
or  any  imitation  of  the  name  of  any  person  who  has  obtained 
a  patent  therefor,  without  the  consent  of  such  patentee,  or  bis 
assigns  or  legal  representatives  ;  or  shall  in  any  manner  mark 


THE  PATENT  ACT  OF  1870.  637 

upon  or  affix  to  any  such  patented  article  the  word  "  patent }> 
or  "  patentee,"  or  the  words  "  letters-patent,"  or  any  word 
of  like  import,  with  intent  to  imitate  or  counterfeit  the  mark 
or  device  of  the  patentee,  without  having  the  license  or  con- 
sent of  such  patentee  or  his  assigns  or  legal  representatives  : 
or  shall  in  any  manner  mark  upon  or  affix  to  any  unpatented 
article  the  word  "  patent,"  or  any  word  importing  that  the 
same  is  patented,  for  the  purpose  of  deceiving  the  public,  ho 
shall  be  liable  for  every  such  offence  to  a  penalty  of  not  less 
than  one  hundred  dollars,  with  costs  ;  one  moiety  of  said 
penalty  to  the  person  who  shall  sue  for  the  same,  and  the  other 
to  the  use  of  the  United  States,  to  be  recovered  by  suit  in  any 
district  court  of  the  United  States  within  whose  jurisdiction 
such  offence  may  have  been  committed.  [See  Revised  Stat- 
utes, Section  4901.] 

SECTION  40.  And  be  it  further  enacted,  That  any  citizen  of 
the  United  States,  who  shall  have  made  any  new  invention  or 
discovery,  and  shall  desire  further  time  to  mature  the  same, 
may,  on  payment  of  the  duty  required  by  law,  file  in  the 
Patent  Office  a  caveat  setting  forth  the  design  thereof,  and  of 
its  distinguishing  characteristics,  and  praying  protection  of  his 
right  until  he  shall  have  matured  his  invention  ;  and  such 
caveat  shall  be  filed  in  the  confidential  archives  of  the  office 
and  preserved  in  secrecy,  and  shall  be  operative  for  the  term 
of  one  year  from  the  filing  thereof  ;  and  if  application  shall 
be  made  within  the  year  by  any  other  person  for  a  patent  with 
which  such  caveat  would  in  any  manner  interfere,  the  com- 
missioner shall  deposit  the  description,  specification,  draw- 
ings, and  model  of  such  application  in  like  manner  in  the  con- 
fidential archives  of  the  office,  and  give  notice  thereof,  by 
mail,  to  the  person  filing  the  caveat,  who,  if  he  would  avail 
himself  of  his  caveat,  shall  file  his  description,  specification, 
drawings,  and  model  within  three  months  from  the  time  of 
placing  said  notice  in  the  post-office  in  Washington,  with  the 
usual  time  required  for  transmitting  it  to  the  caveator  added 
thereto,  which  time  shall  be  indorsed  on  the  notice.  And  an 
alien  shall  have  the  privilege  herein  granted,  if  he  shall  have 
resided  in  the  United  States  one  year  next  preceding  the  filing 


638  THE    PATENT    STA.TCTES. 

of  his  caveat,  and  made  oath  of  his  intention  to  become  a  citi, 
zen.  [See  Revised  Statutes,  Section  4902.] 

SECTION  41.  And  be  it  further  enacted,  That  whenever,  on 
examination,  any  claim  for  a  patent  is  rejected  for  any  reason 
whatever,  the  commissioner  shall  notify  the  applicant  thereof, 
giving  him  briefly  the  reasons  for  such  rejection,  together  with 
such  information  and  references  as  may  be  useful  in  judging 
of  the  propriety  of  renewing  his  application  or  of  altering  his 
specification  ;  and  if,  after  receiving  such  notice,  the  applicant 
shall  persist  in  his  claim  for  a  patent,  with  or  without  altering 
his  specifications,  the  commissioner  shall  order  a  re-examina- 
tion of  the  case.  [See  Revised  Statutes,  Section  4903.] 

SECTION  42.  And  be  it  further  enacted,  That  whenever  an 
application  is  made  for  a  patent  which,  in  the  opinion  of  the 
commissioner,  would  interfere  with  any  pending  application, 
or  with  any  unexpired  patent,  he  shall  give  notice  thereof  to 
the  applicants,  or  applicant  and  patentee,  as  the  case  may  be, 
and  shall  direct  the  primary  examiner  to  proceed  to  determine 
the  question  of  priority  of  invention.  And  the  commissioner 
may  issue  a  patent  to  the  party  who  shall  be  adjudged  the 
prior  inventor,  unless  the  adverse  party  shall  appeal  from  the 
decision  of  the  primary  examiner,  or  of  the  board  of  examiners- 
in-chief,  as  the  case  may  be,  within  such  time,  not  less  than 
twenty  days,  as  the  commissioner  shall  prescribe.  [See  Re- 
vised Statutes,  Section  4904.] 

SECTION  43.  And  ~be  it  further  enacted,  That  the  commis- 
sioner may  establish  rules  for  taking  affidavits  and  depositions 
required  in  cases  pending  in  the  Patent  Office,  and  such  af- 
fidavits and  depositions  may  be  taken  before  any  officer  author- 
ized by  law  to  take  depositions  to  be  used  in  the  courts  of  the 
United  States,  or  of  the  State  where  the  officer  resides.  [See 
Revised  Statutes,  Section  4905.] 

SECTION  44.  And  ~be  it  further  enacted,  That  the  clerk  of 
any  court  of  the  United  States,  for  any  district  or  territory 
wherein  testimony  is  to  be  taken  for  use  in  any  contested  case 
pending  in  the  Patent  Office,  shall,  upon  the  application  of 
any  party  thereto,  or  his  agent  or  attorney,  issue  [a]  subposna 
for  any  witness  residing  or  being  within  said  district  or  terri- 


THE   PATENT  ACT   OF    1870.  639 

cory,  commanding  him  to  appear  and  testify  before  any  officer 
in  said  district  or  territory  authorized  to  take  depositions  and 
affidavits,  at  any  time  and  place  in  the  subpoena  stated  ;  and  if 
any  witness,  after  being  duly  served  with  such  subpoena,  shall 
neglect  or  refuse  to  appear,  or  after  appearing  shall  refuse  to 
testify,  the  judge  of  the  court  whose  clerk  issued  the  subpoena, 
may,  on  proof  of  such  neglect  or  refusal,  enforce  obedience  to 
the  process,  or  punish  the  disobedience  as  in  other  like  cases. 
[See  Revised  Statutes,  Sections  4906  and  4908.] 

SECTION  45.  And  be  it  further  enacted,  That  every  witness 
duly  subpoenaed  and  in  attendance  shall  be  allowed  the  same 
fees  as  are  allowed  to  witnesses  attending  the  courts  of  the 
United  States,  but  no  witness  shall  be  required  to  attend  at  any 
place  more  than  forty  miles  from  the  place  where  the  subpoena 
is  served  upon  him.  nor  be  deemed  guilty  of  contempt  for 
disobeying  such  subpoena,  unless  his  fees  and  travelling  ex- 
penses in  going  to,  returning  from,  and  one  day's  attendance 
at  the  place  of  examination,  are  paid  or  tendered  him  at  the 
time  of  the  service  of  the  subpoena  ;  nor  for  refusing  to  dis- 
close any  secret  invention  or  discovery  made  or  owned  by  him- 
self. [See  Revised  Statutes,  Sections  4906,  4907,  and 
4908.] 

SECTION  46.  And  le  it  further  enacted,  That  every  appli- 
cant for  a  patent  or  the  reissue  of  a  patent,  any  of  the  claims 
of  which  have  been  twice  rejected,  and  every  party  to  an  in- 
terference, may  appeal  from  the  decision  of  the  primary  ex- 
aminer, or  of  the  examiner  in  charge  of  interference  [s],  in 
such  case  to  the  board  of  examiners-in-chief ,  having  once  paid 
the  fee  for  such  appeal  provided  by  law.  [See  Revised  Stat- 
'Utes,  Section  4909.] 

SECTION  47.  And  le  it  further  enacted,  That  if  such  party 
is  dissatisfied  with  the  decision  of  the  examiners-in-chief,  he 
may,  on  payment  of  the  duty  required  by  law,  appeal  to  the 
commissioner  in  person.  [See  Revised  Statutes,  Section 

4910.] 

SECTION  48.  And  be  it  further  enacted,  That  if  such  party, 
except  a  party  to  an  interference,  is  dissatisfied  with  the  deci- 
sion of  the  commissioner,  he  may  appeal  to  the  Supreme  Court 


640  THE   PATENT    STATUTES. 

of  the  District  of  Columbia,  sitting  in  bane.  [See  Revised 
Statutes,  Section  4911.] 

SECTION  49.  And  be  it  further  enacted.  That  when  an  ap- 
peal is  taken  to  the  Supreme  Court  of  the  District  of  Colum- 
bia, the  appellant  shall  give  notice  thereof  to  the  commis- 
sioner, and  file  in  the  Patent  Office,  within  such  time  as  the 
commissioner  shall  appoint,  his  reasons  of  appeal,  specifically 
set  forth  in  writing.  [See  Revised  Statutes,  Section  4912.] 

SECTION  50.  And  he  it  further  enacted.  That  it  shall  be  the 
duty  of  said  court,  on  petition,  to  hear  and  determine  such 
appeal,  and  to  revise  the  decision  appealed  from  in  a  summary 
way,  on  the  evidence  produced  before  the  commissioner,  at 
such  early  and  convenient  time  as  the  court  may  appoint, 
notifying  the  commissioner  of  the  time  and  place  of  hearing  ; 
and  the  revision  shall  be  confined  to  the  points  set  forth  in  the 
reasons  of  appeal.  And  after  hearing  the  case,  the  court  shall 
return  to  the  commissioner  a  certificate  of  its  proceedings  and 
decision,  which  shall  be  entered  of  record  in  the  Patent 
Office,  and  govern  the  further  proceedings  in  the  case.  But 
no  opinion  or  decision  of  the  court  in  any  such  case  shall  pre- 
clude any  person  interested  from  the  right  to  contest  the 
validity  of  such  patent  in  any  court  wherein  the  same  may  be 
called  in  question.  [See  Revised  Statutes,  Section  4914.] 

SECTION  51.  And  be  it  further  enacted,  That  on  receiving 
notice  of  the  time  and  place  of  hearing  such  appeal,  the  com- 
missioner shall  notify  all  parties  who  appear  to  be  interested 
therein  in  such  manner  as  the  court  may  prescribe.  The 
party  appealing  shall  lay  before  the  court  certified  copies  of  all 
the  original  papers  and  evidence  in  the  case,  and  the  commis- 
sioner shall  furnish  it  with  the  grounds  of  his  decision,  fully 
set  forth  in  writing,  touching  all  the  points  involved  by  the 
reasons  of  appeal.  And  at  the  request  of  any  party  interested, 
or  of  the  court,  the  commissioner  and  the  examiners  may  be 
examined  under  oath,  in  explanation  of  the  principles  of  the 
machine  or  other  thing  for  which  a  patent  is  demanded.  [See 
Revised  Statutes,  Section  4913.] 

SECTION  52.  And  be  it  further  enacted,  That  whenever  a 
patent  on  application  is  refused,  for  any  reason  whatever, 


THE  PATENT  ACT  OF  1870.  641 

either  by  the  commissioner  or  by  the  Supreme  Court  of  the 
District  of  Columbia  upon  appeal  from  the  commissioner,  the 
applicant  may  have  remedy  by  bill  in  equity  ;  and  the  court 
having  cognizance  thereof,  on  notice  to  adverse  parties  and 
other  due  proceedings  had,  may  adjudge  that  such  applicant 
is  entitled,  according  to  law,  to  receive  a  patent  for  his  inven- 
tion, as  specified  in  his  claim,  or  for  any  part  thereof,  as  the 
facts  in  the  case  may  appear.  And  such  adjudication,  if  it  be 
in  favor  of  the  right  of  the  applicant,  shall  authorize  the  com- 
missioner to  issue  such  patent,  on  the  applicant  filing  in  the 
Patent  Office  a  copy  of  the  adjudication,  and  otherwise  com- 
plying with  the  requisitions  of  law.  And  in  all  cases  where 
there  is  no  opposing  party  a  copy  of  the  bill  shall  be  served  on 
the  commissioner,  and  all  the  expenses  of  the  proceeding  shall 
be  paid  by  the  applicant,  whether  the  final  decision  is  in  his 
favor  or  not.  [See  Revised  Statutes,  Section  4915.] 

SECTION  53.  And  fie  it  further  enacted,  That  whenever  any 
patent  is  inoperative  or  invalid,  by  reason  of  a  defective  or  in- 
sufficient specification,  or  by  reason  of  the  patentee  claiming 
as  his  own  invention  or  discovery  more  than  he  had  a  right  to 
claim  as  new,  if  the  error  has  arisen  by  inadvertence,  accident, 
or  mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, the  commissioner  shall,  on  the  surrender  of  such  a  pat- 
ent and  the  payment  of  the  duty  required  by  law,  cause  a  new 
patent  for  the  same  invention,  and  in  accordance  with  the  cor- 
rected specification,  to  be  issued  to  the  patentee,  or,  in  the 
case  of  his  death  or  assignment  of  the  whole  or  any  undivided 
part  of  the  original  patent,  to  his  executors,  administrators,  or 
assigns,  for  the  unexpired  part  of  the  term  of  the  original  pat- 
ent, the  surrender  of  which  shall  take  effect  upon  the  issue  of 
the  amended  patent  ;  and  the  commissioner  may,  in  his  dis- 
cretion, cause  several  patents  to  be  issued  for  distinct  and 
separate  parts  of  the  thing  patented,  upon  demand  of  the  ap- 
plicant, and  upon  payment  of  the  required  fee  for  a  reissue 
for  each  of  such  reissued  letters-patent.  And  the  specifica- 
tions and  claim  in  every  such  case  shall  be  subject  to  revision 
and  restriction  in  the  same  manner  as  original  applications  are. 
And  the  patent  so  reissued,  together  witli  the  corrected  speci- 


642  THE    PATENT    STATUTES. 

fication,  shall  have  the  effect  and  operation  in  law,  on  the  trial 
of  all  actions  for  causes  thereafter  arising,  as  though  the  same 
had  been  originally  filed  in  such  corrected  form  ;  bat  no  new 
matter  shall  be  introduced  into  the  specification,  nor  in  case  of 
a  machine  patent  shall  the  model  or  drawings  be  amended, 
except  each  by  the  other  ;  but  when  there  is  neither  model 
nor  drawing,  amendments  may  be  made  upon  proof  satisfac- 
tory to  the  commissioner  that  such  new  matter  or  amendment 
was  a  part  of  the  original  invention,  and  was  omitted  from  the 
specification  by  inadvertence,  accident,  or  mistake,  as  afore- 
said. [See  Revised  Statutes,  Section  4916.] 

SECTION  54.  And  be  it  further  enacted,  That  whenever, 
through  inadvertence,  accident,  or  mistake,  and  without  any 
fraudulent  or  deceptive  intention,  a  patentee  has  claimed  more 
than  that  of  which  he  was  the  original  or  first  inventor  or  dis- 
coverer, his  patent  shall  be  valid  for  all  that  part  which  is 
truly  and  justly  his  own,  provided  the  same  is  a  material  or 
substantial  part  of  the  thing  patented  ;  and  any  such  patentee, 
his  heirs  or  assigns,  whether  of  the  whole  or  any  sectional  in- 
terest therein,  may,  on  payment  of  the  duty  required  by  law, 
make  disclaimer  of  such  parts  of  the  thing  patented  as  he  shall 
not  choose  to  claim  or  to  hold  by  virtue  of  the  patent  or  as- 
signment, stating  therein  the  extent  of  his  interest  in  such 
patent ;  said  disclaimer  shall  be  in  writing,  attested  by  one  or 
more  witnesses,  and  recorded  in  the  Patent  Office,  and  it  shall 
thereafter  be  considered  as  part  of  the  original  specification  to 
the  extent  of  the  interest  possessed  by  the  claimant  and  by 
those  claiming  under  him  after  the  record  thereof.  But  no 
such  disclaimer  shall  affect  any  action  pending  at  the  time  of 
its  being  filed,  except  so  far  as  may  relate  to  the  question  of 
unreasonable  neglect  or  delay  in  filing  it.  [See  Revised  Stat- 
utes, Section  4917.] 

SECTION  55.  And  be  it  further  enacted,  That  all  actions, 
suits,  controversies,  and  cases  arising  under  the  patent  laws  of 
the  United  States  shall  be  originally  cognizable,  as  well  in 
equity  as  at  law,  by  the  circuit  courts  of  the  United  States,  or 
any  district  court  having  the  powers  and  jurisdiction  of  a  cir- 
cuit court,  or  by  the  Supreme  Court  of  the  District  of  Col  urn- 


THE  PATENT  ACT  OF  1870.  643 

bia,  or  of  any  territory  ;  and  the  court  shall  have  power,  upon 
bill  in  equity  filed  by  any  party  aggrieved,  to  grant  injunc- 
tions according  to  the  course  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  any  right  secured  by 
patent,  on  such  terms  as  the  court  may  deem  reasonable  ;  and 
upon  a  decree  being  rendered  in  any  such  case  for  an  infringe, 
ment,  the  claimant  [complainant]  shall  be  entitled  to  recover, 
in  addition  to  the  profits  to  be  accounted  for  by  the  defend- 
ant, the  damages  the  complainant  has  sustained  thereby,  and 
the  court  shall  assess  the  same  or  cause  the  same  to  be  assessed 
under  its  direction,  and  the  court  shall  have  the  same  powers 
to  increase-  the  same  in  its  discretion  that  are  given  by  this  act 
to  increase  the  damages  found  by  verdicts  in  actions  upon  the 
case  ;  but  all  actions  shall  be  brought  during  the  term  for 
which  the  letters-patent  shall  be  granted  or  extended,  or  with- 
in six  years  after  the  expiration  thereof.  [See  Revised  Stat- 
utes, Section  629,  1"  9,  and  Section  4921.] 

SECTION  56.  And  be  it  further  enacted,  That  a  writ  of 
error  or  appeal  to  the  Supreme  Court  of  the  United  States 
shall  lie  from  all  judgments  and  decrees  of  any  circuit  court, 
or  of  any  district  court  exercising  the  jurisdiction  of  a  circuit 
court,  or  of  the  Supreme  Court  of  the  District  of  Columbia, 
or  of  any  Territory,  in  any  action,  suit,  controversy,  or  case,  at 
law  or  in  equity,  touching  patent  rights,  in  the  same  mariner 
and  under  the  same  circumstances  as  in  other  judgments  and 
decrees  of  such  circuit  courts,  without  regard  to  the  sum  or 
Talue  in  controversy.  [See  Revised  Statutes,  Section  699.] 

SECTION  57.  And  be  it  further  enacted,  That  written  or 
printed  copies  of  any  records,  books,  papers,  or  drawings  be- 
longing to  the  Patent  Office,  and  of  letters-patent  under  the 
signature  of  the  commissioner  or  acting  commissioner,  with 
the  seal  of  office  affixed,  shall  be  competent  evidence  in  all 
cases  wherein  the  originals  could  be  evidence,  and  any  person 
making  application  therefor,  and  paying  the  fee  required  by 
law,  shall  have  certified  copies  thereof.  And  copies  of  the 
specifications  and  'drawings  of  foreign  letters-patent,  certified 
in  like  manner,  shall  be  prims!  facie  evidence  of  the  fact  of 
the  granting  of  such  foreign  letters-patent,  and  of  the  date 


644 


THE    PATENT   STATUTES. 


and  contents  thereof.     [See  Revised  Statutes,   Sections  892 
and  893.] 

SECTION  58.  And  be  it  further  enacted.  That  whenever 
there  shall  be  interfering  patents,  any  person  interested  in  any 
one  of  such  interfering  patents,  or  in  the  working  of  the  in- 
vention claimed  under  either  of  such  patents,  may  have  relief 
against  the  interfering  patentee,  and  all  parties  interested 
under  him,  by  suit  in  equity  against  the  owners  of  the  inter- 
fering patent  ;  and  the  court  having  cognizance  thereof,  as 
hereinbefore  provided,  on  notice  to  adverse  parties,  and  other 
due  proceedings  had  according  to  the  course  of  equity,  may 
adjudge  and  declare  either  of  the  patents  void  in  whole  or  in 
part,  or  inoperative,  or  invalid  in  any  particular  part  of  the 
United  States,  according  to  the  interest  of  the  parties  in  the 
patent  or  the  invention  patented.  But  no  such  judgment  or 
adjudication  shall  affect  the  rights  of  any  person  except  the 
parties  to  the  suit  and  those  deriving  title  under  them  subse- 
quent to  the  rendition  of  such  judgment.  [See  Revised  Stat- 
utes, Section  4918.] 

SECTION  59.  And  be  it  further  enacted,  That  damages  for 
the  infringement  of  any  patent  may  be  recorered  by  action  on 
the  case  in  any  circuit  court  of  the  United  States,  or  district 
court  exercising  the  jurisdiction  of  a  circuit  court,  or  in  the 
Supreme  Court  of  the  District  of  Columbia,  or  of  any  Terri- 
tory, in  the  name  of  the  party  interested,  either  as  patentee, 
assignee,  or  grantee.  And  whenever  in  any  such  action  a 
verdict  shall  be  rendered  for  the  plaintiff,  the  court  may  enter 
judgment  thereon  for  any  sum  above  the  amount  found  by  the 
verdict  as  the  actual  damages  sustained,  according  to  the  cir- 
cumstances of  the  case,  not  exceeding  three  times  the  amount 
of  such  verdict,  together  with  the  costs.  [See  Revised  Stat- 
utes, Section  629,  1"  9,  and  Section  4919.] 

SECTION  60.  And  be  it  further  enacted,  That  whenever, 
through  inadvertence,  accident,  or  mistake,  and  without  any 
wil[l]ful  default  or  intent  to  defraud  or  mislead  the  public,  a 
patentee  shall  have  (in  his  specification)  claimed  to  be  the 
original  and  first  inventor  or  discoverer  of  any  material  or 
substantial  part  of  the  thing  patented,  of  which  he  was  not  the 


THE  PATENT  ACT  OF  1870.  645 

original  and  first  inventor  or  discoverer  as  aforesaid,  every  such 
patentee,  his  executors,  administrators,  and  assigns,  whether 
of  the  whole  or  any  sectional  interest  in  the  patent,  may  main- 
tain a  suit  at  law  or  in  equity,  for  the  infringement  of  any 
part  thereof,  which  was  bona  fide  his  own,  provided  it  shall 
be  a  material  and  substantial  part  of  the  thing  patented,  and 
be  definitely  distinguishable  from  the  parts  so  claimed,  with- 
out right  as  aforesaid,  notwithstanding  the  specifications  may 
embrace  more  than  that  of  which  the  patentee  was  the  origi- 
nal or  first  inventor  or  discoverer.  But  in  every  such  case  in 
which  a  judgment  or  decree  shall  be  rendered  for  the  plaintiff, 
no  costs  shall  be  recovered  unless  the  proper  disclaimer  has 
been  entered  at  the  Patent  Office  before  the  commencement 
of  the  suit  ;  nor  shall  he  be  entitled  to  the  benefits  of  this 
section  if  he  shall  have  unreasonably  neglected  or  delayed 
to  enter  said  disclaimer.  [See  Revised  Statutes,  Section 
4922.] 

SECTION  61.  And  be  it  further  enacted,  That  in  any  action 
for  infringement  the  defendant  may  plead  the  general  issue, 
and  having  given  notice  in  writing  to  the  plaintiff  or  his  at- 
torney, thirty  days  before,  may  prove  on  trial  any  one  or  more 
of  the  following  special  matters  : — 

First.  That  for  the  purpose  of  deceiving  the  public  the  de- 
scription and  specification  filed  by  the  patentee  in  the  Patent 
Office  was  made  to  contain  less  than  the  whole  truth  relative 
to  his  invention  or  discovery,  or  more  than  is  necessary  to 
produce  the  desired  effect  ;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained 
the  patent  for  that  which  was  in  fact  invented  by  another, 
who  was  using  reasonable  diligence  in  adapting  and  perfecting 
the  same  ;  or, 

Third.  That  it  had  been  patented  or  described  in  some 
printed  publication  prior  to  his  supposed  invention  or  discov- 
ery thereof  ;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor  or 
discoverer  of  any  material  and  substantial  part  of  the  thing 
patented  ;  or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this 


646  THE   PATENT    STATUTES. 

country,  for  more  than  two  years  before  his  application  for  a 
patent,  or  had  been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge, 
or  use  of  the  thing  patented,  the  defendant  shall  state  the 
names  of  patentees  and  the  dates  of  their  patents,  and  when 
granted,  and  the  names  and  residences  of  the  persons  alleged 
to  have  invented,  or  to  have  had  the  prior  knowledge  of  the 
thing  patented,  and  where  and  by  whom  it  had  been  used  ; 
and  if  any  one  or  more  of  the  special  matters  alleged  shall  be 
found  for  the  defendant,  judgment  shall  be  rendered  for  him 
with  costs.  And  the  like  defences  may  be  pleaded  in  any  suit 
in  equity  for  relief  against  an  alleged  infringement ;  and 
proofs  of  the  same  may  be  given  upon  like  notice  in  the  an- 
swer of  the  defendant,  and  with  the  like  effect.  [See  Re- 
vised Statutes,  Section  4920.] 

SECTION  62.  And.be  it  further  enacted.  That  whenever  it 
shall  appear  that  the  patentee,  at  the  time  of  making  his  appli- 
cation for  the  patent,  believed  himself  to  be  the  original  and 
first  inventor  or  discoverer  of  the  thing  patented,  the  same 
shall  not  be  held  to  be  void  on  account  of  the  invention  or 
discovery,  or  any  part  thereof,  having  been  known  or  used  in 
a  foreign  country,  before  his  invention  or  discovery  thereof, 
if  it  had  not  been  patented  or  described  in  a  printed  publica- 
tion. [See  Revised  Statutes,  Section  4923.] 

SECTION  63.  And  be  It  further  enacted,  That  where  the  pat- 
entee of  any  invention  or  discovery,  the  patent  for  which  was 
granted  prior  to  the  second  day  of  March,  eighteen  hundred 
and  sixty-one,  shall  desire  an  extension  of  his  patent  beyond 
the  original  term  of  its  limitation,  he  shall  make  application 
therefor,  in  writing,  to  the  commissioner,  setting  forth  the 
reasons  why  such  extension  should  be  granted  ;  and  he  shall 
also  furnish  a  written  statement  under  oath  of  the  ascertained 
value  of  the  invention  or  discovery,  and  of  his  receipts  and 
expenditures  on  account  thereof,  sufficiently  in  detail  to  ex- 
hibit a  true  and  faithful  account  of  the  loss  and  profit  in  any 
manner  accruing  to  him  by  reason  of  said  invention  or  discov- 
ery. And  said  application  shall  be  filed  not  more  than  six 
months  nor  less  than  ninety  days  before  the  expiration  of  the 


THE  PATENT  ACT  OF  1870.  647 

original  term  of  the  patent  ;  and  no  extension  shall  be  granted 
after  the  expiration  of  said  original  term.  [See  Revised  Stat- 
utes, Section  4924.] 

SECTION  64.  And  be  itfurtfier  enacted,  That  upon  the  re- 
ceipt of  such  application,  and  the  payment  of  the  duty  re- 
quired by  law,  the  commissioner  shall  cause  to  he  published  in 
one  newspaper  in  the  city  of  Washington,  and  in  such  other 
papers  published  in  the  section  of  the  country  most  interested 
adversely  to  the  extension  of  the  patent  as  he  may  deem 
proper,  for  at  least  sixty  days  prior  to  the  day  set  for  hearing 
the  case,  a  notice  of  such  application,  and  of  the  time  and 
place  when  and  where  the  same  will  be  considered,  that  any 
person  may  appear  and  show  cause  why  the  extension  should 
not  be  granted.  [See  Revised  Statutes,  Section  4925.] 

SECTION  65.  And  be  it  further  enacted,  That  on  the  publica- 
tion of  such  notice,  the  commissioner  shall  refer  the  case  to 
the  principal  examiner  having  charge  of  the  class  of  inventions 
to  which  it  belongs,  who  shall  make  to  said  commissioner  a 
full  report  of  the  case,  and  particularly  whether  the  invention 
or  discovery  was  new  and  patentable  when  the  original  patent 
was  granted.  [See  Revised  Statutes,  Section  4926.] 

SECTION  66.  And  be  it  further  enacted,  That  the  commis- 
sioner shall,  at  the  time  and  place  designated  in  the  published 
notice,  hear  and  decide  upon  the  evidence  produced,  both  for 
and  against  the  extension  ;  and  if  it  shall  appear  to  his  satis- 
faction that  the  patentee,  without  neglect  or  fault  on  his  part, 
has  failed  to  obtain  from  the  use  and  sale  of  his  invention  or 
discovery,  a  reasonable  remuneration  for  the  time,  ingenuity, 
and  expense  bestowed  upon  it,  and  the  introduction  of  it  into 
use,  and  that  it  is  just  and  proper,  having  due  regard  to  the 
public  interest,  that  the  term  of  the  patent  should  be  extended, 
the  said  commissioner  shall  make  a  certificate  thereon,  renew- 
ing and  extending  the  said  patent  for  the  term  of  seven  years 
from  the  expiration  of  the  first  term,  which  certificate  shall  be 
recorded  in  the  Patent  Office,  and  thereupon  the  said  patent 
shall  have  the  same  effect  in  law  as  though  it  had  been  origi- 
nally granted  for  twenty-one  years.  [See  Revised  Statutes, 
Section  4927.] 


648 


THE    PATENT    STATUTES. 


SECTION  67.  And  ~be  it  further  enacted,  That  the  benefit 
of  the  extension  of  a  patent  shall  extend  to  the  assignees  and 
grantees  of  the  right  to  use  the  thing  patented  to  the  extent 
of  their  interest  therein.  [See  Revised  Statutes,  Section  4928.] 

SECTION  68.  And  be  it  further  enacted,  That  the  following 
shall  be  the  rates  for  patent  fees  :— 

On  filing  each  original  application  for  a  patent,  fifteen 
dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty 
dollars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty 
dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the  primary  examiners 
to  the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  com- 
missioner, twenty  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten  cents 
per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  at- 
torney, or  other  paper,  of  three  hundred  words  or  under,  one 
dollar  ;  of  over  three  hundred  and  under  one  thousand  words, 
two  dollars  ;  of  over  one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them. 
[See  Revised  Statutes,  Section  4934.] 

SECTION  69.  And  be  it  further  enacted,  That  patent  fees 
may  be  paid  to  the  commissioner,  or  to  the  treasurer  or  any  of 
the  assistant  treasurers  of  the  United  States,  or  to  any  of  the 
designated  depositaries,  national  banks,  or  receivers  of  public 
money,  designated  by  the  Secretary  of  the  Treasury  for  that 
purpose,  who  shall  give  the  depositor  a  receipt  or  certificate 
of  deposit  therefor.  And  all  money  received  at  the  Patent 
Office,  for  any  purpose,  or  from  any  source  whatever,  shall  be 
paid  into  the  treasury  as  received,  without  any  deduction 
whatever  ;  and  all  disbursements  for  said  office  shall  be  made 


THE  PATENT  ACT  OF  1870.  649 

by  the  disbursing   clerk  of   the  Interior  Department.     [See 
Revised  Statutes,  Sections  496  and  4935.] 

SECTION  70.  And  be  it  further  enacted,  That  the  Treasurer 
of  the  United  States  is  authorized  to  pay  back  any  sum  or 
sums  of  money  to  any  person  who  shall  have  paid  the  same 
into  the  treasury,  or  to  any  receiver  or  depositary,  to  the 
credit  of  the  treasurer,  as  for  fees  accruing  at  the  Patent  Office 
through  mistake,  certificate  thereof  being  made  to  said  treas- 
urer by  the  Commissioner  of  Patents.  [See  Revised  Statutes, 
Section  4936.] 

N  SECTION  71.  And  be  it  further  enacted,  That  any  person 
who,  by  his  own  industry,  genius,  efforts,  and  expense,  has 
invented  or  produced  any  new  and  original  design  for  a  manu- 
facture, bust,  statue,  alto-relievo,  or  bas-relief  ;  any  new  and 
original  design  for  the  printing  of  wool[l]en,  silk,  cotton,  or 
other  fabrics  ;  any  new  and  original  impression,  ornament, 
pattern,  print,  or  picture,  to  be  printed,  painted,  cast,  or 
otherwise  placed  on  or  worked  into  any  article  of  manufact- 
ure ;  or  any  new,  useful,  and  original  shape  or  configuration 
of  any  article  of  manufacture,  the  same  not  having  been 
known  or  used  by  others  before  his  invention  or  production 
thereof,  or  patented  or  described  in  any  printed  publication, 
may,  upon  payment  of  the  duty  required  by  law,  and  other 
due  proceedings  had  the  same  as  in  cases  of  inventions  or  dis- 
coveries, obtain  a  patent  therefor.  [See  Revised  Statutes, 
Section  4929.] 

SECTION  72.  And  be  it  further  enacted,  That  the  commis- 
sioner may  dispense  with  models  of  designs  when  the  design 
can  be  sufficiently  represented  by  drawings  or  photographs. 
[See  Revised  Statutes,  Section  4930.] 

SECTION  73.  And  be  it  further  enacted,  That  patents  for 
designs  may  be  granted  for  the  term  of  three  years  and  six 
months,  or  for  seven  years,  or  for  fourteen  years,  as  the  appli- 
cant may,  in  his  application,  elect.  [See  Revised  Statutes, 
Section  4931.] 

SECTION  74.  And  be  it  further  enacted,  That  patentees  of 
designs  issued  prior  to  March  two,  eighteen  hundred  and  sixty- 
one,  shall  be  entitled  to  extension  of  their  respective  patents 


650  THE    PATENT    STATUTES. 

for  the  term  of  seven  years,  in  the  same  manner  and  under  the 
same  restrictions  as  are  provided  for  the  extension  of  patents 
for  inventions  or  discoveries  issued  prior  to  the  second  day  of 
March,  eighteen  hundred  and  sixty- one.  [See  Re  vised  Stat- 
utes, Section  4932.] 

SECTION  75.  And  be  it  further  enacted,  That  the  following 
shall  be  the  rates  of  fees  in  design  cases  : — 

For  three  years  and  six  months,  ten  dollars. 

tor  seven  years,  fifteen  dollars. 

For  fourteen  years,  thirty  dollars. 

For  all  other  cases  in  which  fees  are  required,  the  same 
rates  as  in  cases  of  inventions  or  discoveries.  [See  Revised 
Statutes,  Section  4934.] 

SECTION  76.  And  be  it  further  enacted,  That  all  the  regula- 
tions and  provisions  which  apply  to  the  obtaining  or  protection 
of  patents  for  inventions  or  discoveries,  not  inconsistent  with 
the  provisions  of  this  act,  shall  apply  to  patents  for  designs. 
[See  Revised  Statutes,  Section  4933.] 

[Sections  77  to  110,  inclusive,  refer  to  trade-marks  and  copy- 
rights, and  not  to  patents.] 

SECTION  111.  And  be  it  further  enacted,  That  the  acts  and 
parts  of  acts  set  forth  in  the  schedule  of  acts  cited,  hereto  an- 
nexed, are  hereby  repealed,  without  reviving  any  acts  or  parts 
of  acts  repealed  by  any  of  said  acts,  or  by  any  clause  or  pro- 
visions therein  :  Provided,  however,  That  the  repeal  hereby 
enacted  shall  not  affect,  impair,  or  take  away  any  right  exist- 
ing under  any  of  said  laws  ;  but  all  actions  and  causes  of  ac- 
tion, both  in  law  or  in  equity,  which  have  arisen  under  any  of 
said  laws,  may  be  commenced  and  prosecuted,  and  if  already 
commenced  may  be  prosecuted  to  final  judgment  and  execu- 
tion, in  the  same  manner  as  though  this  act  had  not  been 
passed,  excepting  that  the  remedial  provisions  of  this  act  shall 
be  applicable  to  all  suits  and  proceedings  hereafter  com- 
menced :  And  provided  also,  That  all  applications  for  patents 
pending  at  the  time  of  the  passage  of  this  act,  in  cases  where 
the  duty  has  been  paid,  shall  be  proceeded  with  and  acted  on 
in  the  same  manner  as  though  filed  after  the  passage  thereof  : 
And  provided  further,  That  all  offences  which  are  defined 


THE  PATENT  ACT  OF  1870.  651 

and  punishable  under  any  of  said  acts,  and  all  penalties  and 
forfeitures  created  thereby  and  incurred  before  this  act  takes 
effect,  may  be  prosecuted,  sued  for,  and  recovered,  and  such 
offences  punished  according  to  the  provision  of  said  acts, 
which  are  continued  in  force  for  such  purpose. 

APPROVED  July  8,  1870. 

Kepealed  June  22,  1874.     Revised  Statutes,  Title  LXXIV. 

PATENT   ACT   OF  MARCH  3,  1871. 

16  STATUTES  AT  LARGE,  583. 

An  Act  to  amend  an  Act  to  revise,  consolidate,  and  amend 
the  Statutes  relating  to  Patents  and  Copyrights. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled ',  That 
that  part  of  section  thirty-three  of  an  act  entitled  "  An  act 
to  revise,  consolidate,  and  amend  the  statutes  relating  to  pat- 
ents and  copyrights,"  approved  July  eighth,  eighteen  hundred 
and  seventy,  which  requires  that,  in  case  of  application  by  as- 
signee or  assignees  for  reissue  of  letters-patent,  the  application 
shall  be  made  and  the  specification  sworn  to  by  the  inventor 
or  discoverer,  if  living,  shall  not  be  construed  to  apply  to  pat- 
ents issued  and  assigned  prior  to  July  eighth,  eighteen  hun- 
dred and  seventy. 

APPROVED  March  3,  1871. 

Repealed  June  22,  1874.     Revised  Statutes,  Title  LXXIV. 

PATENT   ACT   OF  MARCH  24,  1871. 

17  STATUTES  AT  LARGE,  2. 
An  Act  to  further  regulate  the  publication  of  the  Specifications 

and  Drawings  of  the  Patent  Office. 

Be  it  enacted  ly  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
if,  in  the  judgment  of  the  joint  committee  on  printing,  the 
provisions  of  the  joint  resolution  providing  for  publishing 
specifications  and  drawings  of  the  Patent  Office,  approved 
January  eleventh,  eighteen  hundred  and  seventy-one,  can  be 


652 


THE   PATENT   STATUTES. 


performed  under  the  direction  of  the  Commissioner  of  Patents 
more  advantageously  than  in  the  manner  provided  in  said 
joint  resolution,  it  shall  be  so  done,  under  such  limitations  and 
conditions  as  the  joint  committee  on  printing  may  from  time 
to  time  prescribe. 

SECTION  2.  That  the  price  of  the  printed  copies  of  specifica- 
tions and  drawings  of  patents,  when  uncertified,  shall  be  de- 
termined by  the  Commissioner  of  Patents,  ten  cents  being 
hereby  fixed  as  the  minim  am,  and  fifty  cents  as  the  maximum 
price  of  the  same  ;  certified  copies  to  be  sold  at  the  price  fixed 
by  the  patent  act  of  eighteen  hundred  and  seventy. 

APPROVED  March  24,  1871. 

Eepealed  June  22,  1874.     Revised  Statutes,  Title  LXXIV. 


THE  REVISED   STATUTES 


RELATING   TO    PATENTS. 


440.  Clerks  and  employes. 

441.  Secretary  of  the  Interior. 

475.  Establishment    of    the    Patent 

Office. 

476.  Officers  and  employes. 

477.  Salaries. 

478.  Seal. 

479.  Bonds    of    Commissioner  and 

chief  clerk. 

480.  Restrictions  upon  officers  and 

employes. 

481.  Duties  of  Commissioner. 

482.  Duties  of  examiners-in-chief. 

483.  Establishment  of  regulations. 

484.  Arrangement  and  exhibition  of 

models,  &c. 

485.  Disposals  of  models  on  rejected 

applications. 

486.  Library. 

487.  Patent-agents  may  be  refused 

recognition. 

488.  Printing  of  papers  filed. 

489.  Printing  copies  of  claims,  laws, 

decisions,  &c. 

490.  Printing      specifications      and 

drawings. 


491.  Additional   specifications    and 

drawings. 

492.  Lithographing  and  engraving. 
493    Price  of  copies  of  specifications 

and  drawings. 

494.  Annual  report  of  the  Commis- 
sioner. 

496.  Disbursements  for  Patent-Of- 
fice. 

629.  Jurisdiction  of  Circuit  Courts. 

699.  Writs  of  error  and  appeals, 
without  reference  to  amount. 

892.  Copies  of  records,  &c.,  of  Patent- 

Office. 

893.  Copies     of      foreign     letters- 

patent. 

894.  Printed  copies  of  specifications 

and  drawings  of  patents. 
973.  Costs    where    disclaimers    are 
necessary. 

4883.  Patents,  how  issued,  attested, 
and  recorded. 

4884.  Their  contents  and  duration. 

4885.  Date  of  patent. 

4886.  What  inventions  are  patenta- 
ble. 


THE   EE VISED   STATUTES. 


653 


4887.  Patents  for  inventions  previ- 
ously patented  abroad. 

4888.  Requisites  of  specification  and 
claim. 

4889.  Drawings,  when  requisite. 

4890.  Specimens  of  ingredients,  &c. 

4891.  Model,  when  requisite. 

4892.  Oath  required  from  applicant. 

4893.  Examination  and  issuing  pat- 
ent. 

4894.  Limitation  upon  time  of  com- 
pleting application. 

4895.  Patents  granted  to  assignee. 

4896.  When,  and  on  what  oath,  exec- 
utor   or     administrator    may 
obtain  patent. 

4897.  Eenewal     of     application    in 
cases  of  failure  to  pay  fees  in 
season. 

4898.  Assignment  of  patents. 

4899.  Persons  purchasing  of  invent- 
or before  application  may  use 
or  sell  the  thing  purchased. 

4900.  Patented     articles     must    be 
marked  as  such. 

4901.  Penalty  for  falsely  marking  or 
labelling  articles  as  patented. 

4902.  Filing  and  effect  of  caveats. 

4903.  Notice   of    rejection  of  claim 
for  patent  to  be  given  to  ap- 
plicant. 

4904.  Interferences. 

4905.  Affidavits  and  depositions. 

4906.  Subpoenas  to  witnesses. 

4907.  Witness  fees. 

4908.  Penalty  for  failing  to  attend  or 
refusing  to  testify. 

4909.  Appeals  from  primary   exam- 
iners to  exaniiners-in-chicf 

4910.  From     examiners-in-chief    to 
Commissioner. 

,  4911.  From  the  Commissioner  to  the 

supreme  court  D.  C. 
4912.  Notice  of  such  appeal. 


4913.  Proceedings  on  appeal  to  su- 
preme court. 

4914.  Determination  of  such  appeal 
and  its  effect. 

4915.  Patents  obtainable  by  bill  in 
equity. 

4916.  Re-issue  of  defective  patents. 

4917.  Disclaimer. 

4918.  Suits  touching  interfering  pat- 
ents. 

4919.  Suits  for  infringement ;  dam- 
ages. 

4920.  Pleading  and  proof  in  actions 
for  infringement. 

..  Power  of  courts  to  grant  in- 
junctions and  estimate  dam- 


4922.  Suit  for  infringement  where 
specification  is  too  broad. 

4923.  Patent  not  void  on  account  of 
previous  use  in  foreign  coun- 
try. 

4924.  Extension  of  patents  granted 
prior  to  March  2,  1861. 

4925.  What  notice  of  application  for 
extension  must  be  given. 

4926.  Applications  for  extension  to 
whom  to  be  referred. 

4927.  Commissioner  to  hear  and  de- 
cide  the   question   of   exten- 
sion. 

4928.  Operation  of  extension. 

4929.  Patent  for  designs  authorized. 

4930.  Models  of  designs. 

4931.  Duration   of   patents  for  de- 
signs. 

4932.  Extension  of  patents  for  de- 
signs. 

4933.  Patents  for  designs  subject  to 
general  rules  of    patent-law. 

4934.  Fees    in    obtaining     patents, 
Ac. 

4935.  Mode  of  payment. 

4936.  Refunding. 


654  THE    PATENT    STATUTES. 

SECTION  440.   There  shall  also  be  in  the  Department  of  the 

Interior  : 

****** 

In  the  Patent  Office  : 

One  chief  clerk,  at  a  salary  of  two  thousand  five  hundred 
dollars  a  year. 

One  examiner  in  charge  of  interferences,  at  a  salary  of  two 
thousand  five  hundred  dollars  a  year. 

One  examiner  in  charge  of  trade-marks,  at  a  salary  of  two 
thousand  five  hundred  dollars  a  year. 

Twenty-four  principal  examiners,  at  a  salary  of  two  thou- 
sand five  hundred  dollars  a  year  each. 

Twenty-four  first  assistant  examiners,  at  a  salary  of  one 
thousand  eight  hundred  dollars  a  year  each. 

Twenty-four  second  assistant  examiners  (two  of  whom  may 
be  women),  at  a  salary  of  one  thousand  six  hundred  dollars  a 
year  each. 

Twenty-four  third  assistant  examiners,  at  a  salary  of  one 
thousand  four  hundred  dollars  a  year  each. 

One  librarian,  at  a  salary  of  two  thousand  dollars  a  year. 

One  machinist,  at  a  salary  of  one  thousand  six  hundred 
dollars  a  year. 

Three  skilled  draughtsmen,  at  a  salary  of  one  thousand  two 
hundred  dollars  a  year  each. 

Thirty-five  copyists  of  drawings,  at  a  salary  of  one  thousand 
dollars  a  year  each. 

One  messenger  and  purchasing  clerk,  at  a  salary  of  one 
thousand  dollars  a  year. 

One  skilled  laborer,  at  a  salary  of  one  thousand  two  hundred 
dollars  a  year. 

Eight  attendants  in  the  model-room,  at  a  salary  of  one  thou- 
sand dollars  a  year  each. 

Eight  attendants  in  the  model-room,  at  a  salary  of  nine  hun- 
dred dollars  a  year  each.  [See  prior  patent  statutes  :  Sections 
2  and  3,  1870  ;  Sections  4  and  7,  1861  ;  Sections  1  and  3, 
1848  ;  Section  10,  1837 ;  Section  2,  1836.] 

SECTION  441.  The  Secretary  of  the  Interior  is  charged  with 
supervising  all  public  business  relating  to  *  *  * 


THE   REVISED    STATUTES.  655 

Fifth.  Patents  for  inventions.  [See  prior  patent  statutes  : 
Section  1,  1870  ;  Section  2,  1849.] 

SECTION  475.  There  shall  be  in  the  Department  of  the  In- 
terior an  office  known  as  the  Patent-Office,  where  all  records, 
books,  models,  drawings,  specifications,  and  other  papers  and 
things  pertaining  to  patents  shall  be  safely  kept  and  preserved. 
[See  prior  patent  statutes  :  Section  1,  1870  ;  Section  1,  1836.] 

SECTION  476.  There  shall  be  in  the  Patent-Office  a  Commis- 
sioner of  Patents,  one  Assistant  Commissioner,  and  three  ex- 
aminers-in-chief,  who  shall  be  appointed  by  the  President,  by 
and  with  the  advice  and  consent  of  the  Senate.  All  other 
officers,  clerks,  and  employes  authorized  by  law  for  the  Office 
shall  be  appointed  by  the  Secretary  of  the  Interior,  upon  the 
nomination  of  the  Commissioner  of  Patents.  [See  prior  pat- 
ent statutes  :  Section  2,  1870  ;  Section  2,  1861  ;  Section  1, 
1836.] 

SECTION  477.  The  salaries  of  the  officers  mentioned  in  the 
preceding  section  shall  be  as  follows  : 

The  Commissioner  of  Patents,  four  thousand  five  hundred 
dollars  a  year. 

The  Assistant  Commissioner  of  Patents,  three  thousand  dol- 
lars a  year. 

Three  examiners-in-chief,  three  thousand  dollars  a  year 
each.  [See  prior  patent  statutes  :  Section  4,  1870  ;  Sections 
2  and  4,  1861  ;  Section  11,  1837  ;  Section  1,  1836.] 

SECTION  478.  The  seal  heretofore  provided  for  the  Patent- 
Office  shall  be  the  seal  of  the  Office,  with  which  letters-patent 
and  papers  issued  from  the  Office  shall  be  authenticated.  [See 
prior  patent  statutes  :  Section  12,  1870  ;  Section  4,  1836.] 

SECTION  479.  The  Commissioner  of  Patents  and  the  chief 
clerk,  before  entering  upon  their  duties,  shall  severally  give 
bond,  with  sureties,  to  the  Treasurer  of  the  United  States,  the 
former  in  the  sum  of  ten  thousand  dollars,  and  the  latter  in 
the  sum  of  five  thousand  dollars,  conditioned  for  the  faithful 
discharge  of  their  respective  duties,  and  that  they  shall  render 
to  the  proper  officers  of  the  Treasury  a  true  account  of  all 
money  received  by  virtue  of  their  offices.  [See  prior  patent 
statutes  :  Section  6,  1870  ;  Section  3,  1836.] 


656  THE    PATENT    STATUTES. 

SECTION  480.  All  officers  and  employes  of  the  Patent- Office 
shall  be  incapable,  during  the  period  for  which  they  hold  their 
appointments,  to  acquire  or  take,  directly  or  indirectly,  except 
by  inheritance  or  bequest,  any  right  or  interest  in  any  patent 
issued  by  the  Office.  [See  prior  patent  statutes  :  Section  16, 
1870.] 

SECTION  481.  The  Commissioner  of  Patents,  under  the 
direction  of  the  Secretary  of  the  Interior,  shall  superintend  or 
perform  all  duties  respecting  the  granting  and  issuing  of  pat- 
ents directed  by  law  ;  and  he  shall  have  charge  of  all  books, 
records,  papers,  models,  machines,  and  other  things  belonging 
to  the  Patent- Office.  [See  prior  patent  statutes  :  Section  7, 
18YO  ;  Section  1,  1836.] 

SECTION  482.  The  examiners-in-chief  shall  be  persons  of 
competent  legal  knowledge  and  scientific  ability,  whose  duty 
it  shall  be,  on  the  written  petition  of  the  appellant,  to  revise 
and  determine  upon  the  validity  of  the  adverse  decisions  of 
examiners  upon  applications  for  patents,  and  for  re-issues  of 
patents,  and  in  interference  cases  ;  and,  when  required  by  the 
Commissioner,  they  shall  hear  and  report  upon  claims  for  ex- 
tensions, and  perform  such  other  like  duties  as  he  may  assign 
them.  [See  prior  patent  statutes  :  Section  10,  18YO  ;  Section 
2,  1861.] 

SECTION  483.  The  Commissioner  of  Patents,  subject  to  the 
approval  of  the  Secretary  of  the  Interior,  may  from  time  to 
time  establish  regulations,  not  inconsistent  with  law,  for  the 
conduct  of  proceedings  in  the  Patent-Office.  [See  prior  pat- 
ent statutes  :  Section  19,  1870  ] 

SECTION  484.  The  Commissioner  of  Patents  shall  cause  to 
be  classified  and  arranged  in  suitable  cases,  in  the  rooms  and 
galleries  provided  for  that  purpose,  the  models,  specimens  of 
composition,  fabrics,  manufactures,  works  of  art,  and  designs, 
which  have  been  or  shall  be  deposited  in  the  Patent- Office  ; 
and  the  rooms  and  galleries  shall  be  kept  open  during  suitable 
hours  for  public  inspection.  [See  prior  patent  statutes  :  Sec- 
tion 13,  1870  ;  Section  20,  1836.] 

SECTION  485.  The  Commissioner  of  Patents  may  restore  to 
the  respective  applicants  such  of  the  models  belonging  to 


THE   REVISED    STATUTES.  657 

rejected  applications  as  he  shall  not  think  necessary  to  be  pre- 
served, or  he  may  sell  or  otherwise  dispose  of  them  after  the 
application  has  been  finally  rejected  for  one  year,  paying  the 
proceeds  into  the  Treasury,  as  other  patent-moneys  are 
directed  to  be  paid.  [See  prior  patent  statutes  :  Section  14, 
1870  ;  Section  5,  1861.] 

SECTION  486.  There  shall  be  purchased  for  the  use  of  tht 
Patent-Office  a  library  of  such  scientific  works  and  periodicals, 
both  foreign  and  American,  as  may  aid  the  officers  in  the  dis- 
charge of  their  duties,  not  exceeding  the  amount  annually  ap. 
propriated  for  that  purpose.  [See  prior  patent  statute  :  Sec- 
tion 15,  1870.] 

SECTION  ,487.  For  gross  misconduct  the  Commissioner  of 
Patents  may  refuse  to  recognize  any  person  as  a  patent-agent, 
either  generally  or  in  any  particular  case  ;  but  the  reasons  for 
such  refusal  shall  be  duly  recorded,  and  be  subject  to  the  ap- 
proval of  the  Secretary  of  the  Interior.  [See  prior  patent 
statute  :  Section  17,  1870.] 

SECTION  488.  The  Commissioner  of  Patents  may  require  all 
papers  filed  in  the  Patent-Office,  if  not  correctly,  legibly,  and 
clearly  written,  to  be  printed  at  the  cost  of  the  party  filing 
them.  [See  prior  patent  statutes  :  Section  18,  1870  ;  Section 
8,  1861.] 

SECTION  489.  The  Commissioner  of  Patents  may  print,  or 
cause  to  be  printed,  copies  of  the  claims  of  current  issues,  and 
copies  of  such  laws,  decisions,  regulations,  and  circulars  as 
may  be  necessary  for  the  information  of  the  public.  [See 
prior  patent  statute  :  Section  20,  1870.] 

SECTION  490.  The  Commissioner  of  Patents  is  authorized  to 
have  printed,  from  time  to  time,  for  gratuitous  distribution, 
not  to  exceed  one  hundred  and  fifty  copies  of  the  complete 
specifications  and  drawings  of  each  patent  hereafter  issued, 
together  with  suitable  indexes,  one  copy  to  be  placed  for  free 
public  inspection  in  each  capitol  of  every  State  and  Territory, 
one  for  the  like  purpose  in  the  clerk's  office  of  the  district 
court  of  each  judicial  district  of  the  United  States,  except 
when  such  offices  are  located  in  State  or  territorial  capitols, 
and  one  in  the  Library  of  Congress,  which  copies  shall  be  cer- 


658  THE    PATENT    STATUTES. 

tified  under  the  hand  of  the  Commissioner  and  seal  of  the 
Patent-Office,  and  shall  not  be  taken  from  the  depositories  for 
any  other  purpose  than  to  be  used  as  evidence.  [See  Joint 
Resolution  No.  5,  January  11,  1871,  16  Statutes  at  Large, 
590.] 

SECTION  491.  The  Commissioner  of  Patents  is  authorized  to 
have  printed  such  additional  numbers  of  copies  of  specifica- 
tions and  drawings,  certified  as  provided  in  tne  preceding  sec- 
tion, at  a  price  not  to  exceed  the  contract  price  for  such  draw- 
ings, for  sale,  as  may  be  warranted  by  the  actual  demand  for 
the  same  ;  and  he  is  also  authorized  to  furnish  a  complete  set 
of  such  specifications  and  drawings  to  any  public  library  which 
will  pay  for  binding  the  same  into  volumes  to  correspond  with 
those  in  the  Patent-Office,  and  for  the  transportation  of  the 
same,  and  which  shall  also  provide  for  proper  custody  for  the 
same,  with  convenient  access  for  the  public  thereto,  under 
such  regulations  as  the  Commissioner  shall  deem  reasonable. 
[See  Joint  Resolution  No.  5,  January  11,  1871,  16  Statutes  at 
Large,  590.] 

SECTION  492.  The  lithographing  and  engraving  required  by 
the  two  preceding  sections  shall  be  awarded  to  the  lowest  and 
best  bidders  for  the  interests  of  the  Government,  due  regard 
being  paid  to  the  execution  of  the  work,  after  due  advertising 
by  the  Congressional  Printer,  under  the  direction  of  the  Joint 
Committee  on  Printing  ;  but  the  Joint  Committee  on  Printing 
may  empower  the  Congressional  Printer  to  make  immediate 
contracts  for  engraving,  whenever,  in  their  opinion,  the 
exigencies  of  the  public  service  will  not  justify  waiting  for  ad- 
vertisement and  award  ;  or  if,  in  the  judgment  of  the  Joint 
Committee  on  Printing,  the  work  can  be  performed  under  the 
direction  of  the  Commissioner  of  Patents  more  advantageously 
than  in  the  manner  above  prescribed,  it  shall  be  so  done,  under 
such  limitations  and  conditions  as  the  Joint  Committee  on 
Printing  may  from  time  to  time  prescribe.  [See  Joint  Reso- 
lution No.  5,  January  11,  1871,  16  Statutes  at  Large,  590, 
and  Section  1  of  Patent  Act  of  March  24,  1871.] 

SECTION  493.  The  price  to  be  paid  for  uncertified  printed 
copies  of  specifications  and  drawings  of  patents  shall  be  deter- 


THE   REVISED   STATUTES.  659 

mined  by  the  Commissioner  of  Patents,  within  the  limits  of 
ten  cents  as  the  minimum  and  fifty  cents  as  the  maximum 
price.  [See  prior  patent  statute  :  Section  1,  March  24,  1871.] 

SECTION  494.  The  Commissioner  of  Patents  shall  lay  befoie 
Congress,  in  the  month  of  January,  annually,  a  report,  giving 
a  detailed  statement  of  all  moneys  received  for  patents,  for 
copies  of  records  or  drawings,  or  from  any  other  source  what- 
ever ;  a  detailed  statement  of  all  expenditures  for  contingent 
and  miscellaneous  expenses  ;  a  list  of  all  patents  which  were 
granted  during  the  preceding  year,  designating  under  proper 
heads  the  subjects  of  such  patents  ;  an  alphabetical  list  of  all  the 
patentees,  with  their  places  of  residence  ;  a  list  of  all  patents 
which  have  been  extended  during  the  year  ;  and  such  othei 
information  of  the  condition  of  the  Patent-Office  as  may  be 
useful  to  Congress  or  the  public.  [See  prior  patent  statutes  : 
Section  9,  1870  ;  Section  14,  1837  ;  Section  1,  July  3,  1832.] 

SECTION  496.  All  disbursements  for  the  Patent-Office  shall 
be  made  by  the  disbursing  clerk  of  the  Interior  Department. 
[See  prior  patent  statutes  j  Section  69,  1870  ;  Section  14, 
1837.] 

SECTION  629.  The  circuit  courts  shall  have  original  jurisdic- 
tion, as  follows  :  *  *  * 

Ninth.  Of  all  suits  at  law  or  in  equity  arising  under  the 
patent  or  copyright  laws  of  the  United  States.  [See  prior 
patent  statutes  :  Section  55,  1870  ;  Section  14,  1836  ;  Section 
1,  1819.] 

SECTION  699.  A  writ  of  error  may  be  allowed  to  review  any 
final  judgment  at  law,  and  an  appeal  shall  be  allowed  from 
any  final  decree  in  equity  hereinafter  mentioned,  without  re- 
gard  to  the  sum  or  value  in  dispute  : 

First.  Any  final  judgment  at  law  or  final  decree  in  equity 
of  any  circuit  court,  or  of  any  district  court  acting  as  a  circuit 
court,  or  of  the  Supreme  Court  of  the  District  of  Columbia, 
or  of  any  Territory,  in  any  case  touching  patent-rights  or 
copyrights.  [See  prior  patent  statutes  :  Section  56,  1870  ; 
Section  1,  February  18,  1861 ;  Section  16,  1836  ;  Section  1, 

1819.] 

SECTION   892.   Written  or   printed   copies  of  any  records, 


660  THE   PATENT   STATUTES. 

books,  papers,  or  drawings  belonging  to  the  Patent-Office, 
and  of  letters-patent  authenticated  by  the  seal  and  certified  by 
the  Commissioner  or  Acting  Commissioner  thereof,  shall  be 
evidence  in  all  cases  wherein  the  originals  could  be  evidence  ; 
and  any  person  making  application  therefor,  and  paying  the 
fee  required  by  law,  shall  have  certified  copies  thereof.  [See 
prior  patent  statutes  :  Section  57,  1870  ;  Section  15,  March  2, 
1861  ;  Section  2,  1837  ;  Section  4,  1836  ;  Sections  3,  6,  1790.] 

SECTION  893.  Copies  of  the  specifications  and  drawings  of 
foreign  letters-patent,  certified  as  provided  in  the  pr. ceding 
section,  shall  be  prima-facie  evidence  of  the  fact  of  the 
granting  of  such  letters-patent,  and  of  the  date  and  contents 
thereof.  [See  prior  patent  statute  :  Section  57,  1870.] 

SECTION  894.  The  printed  copies  of  specifications  and 
drawings  of  patents,  which  the  Commissioner  of  Patents  is 
authorized  to  print  for  gratuitous  distribution,  and  to  deposit 
in  the  capitols  of  the  States  and  Territories,  and  in  the  clerk's 
offices  of  the  district  courts,  shall,  when  certified  by  him  and 
authenticated  by  the  seal  of  his  office,  be  received  in  all  courts 
as  evidence  of  all  matters  therein  contained.  [See  Joint  Reso- 
lution No.  5,  January  11,  1871  ;  16  Statutes  at  Large,  590.] 

SECTION  973.  "When  judgment  or  decree  is  rendered  for  the 
plaintiff  or  complainant,  in  any  suit  at  law  or  in  equity,  for 
the  infringement  of  a  part  of  a  patent,  in  which  it  appears  that 
the  patentee,  in  his  specification,  claimed  to  be  the  original 
and  first  inventor  or  discoverer  of  any  material  or  substantial 
part  of  the  thing  patented,  of  which  he  was  not  the  original 
and  first  inventor,  no  costs  shall  be  recovered,  unless  the 
proper  disclaimer,  as  provided  by  the  patent-laws,  has  been 
entered  at  the  Patent-Office  before  the  suit  was  brought. 
[See  Revised  Statutes,  Section  4922  ;  and  prior  patent  stat- 
utes :  Section  60,  1870  ;  Section  9,  1837  ;  Section  15,  1836.] 

SECTION  4883.  All  patents  shall  be  issued  in  the  name  of 
the  United  States  of  America,  under  the  seal  of  the  Patent 
Office,  and  shall  be  signed  by  the  Secretary  of  the  Interior  and 
countersigned  by  the  Commissioner  of  Patents,  and  they  shall 
be  recorded,  together  with  the  specifications,  in  the  Patent 
Office,  in  books  to  be  kept  for  that  purpose.  [See  prior  pat- 


THE   REVISED   STATUTES.  661 

ent  statutes  :  Section  21,  1870  ;  Section  5,  1836  ;  Section  1, 
1793  ;  Section  1,  1790.] 

SECTION  4884.  Every  patent  shall  contain  a  short  title  or 
description  of  the  invention  or  discovery,  correctly  indicating 
its  nature  and  design,  and  a  grant  to  the  patentee,  his  heirs  or 
assigns,  for  the  term  of  seventeen  years,  of  the  exclusive  right 
to  make,  use,  and  vend  the  invention  or  discovery  throughout 
the  United  States,  and  the  Territories  thereof,  referring  to  the 
specification  for  the  particulars  thereof.  A  copy  of  the 
specification  and  drawings  shall  be  annexed  to  the  patent  and 
be  a  part  thereof.  [See  prior  patent  statutes  :  Section  22, 
1870  ;  Section  16,  1861  ;  Section  5,  1836  ;  Section  1,  1793  ; 
Section  1,  1790.] 

SECTION  4885.  Every  patent  shall  bear  date  as  of  a  day  not 
later  than  six  months  from  the  time  at  which  it  was  passed  and 
allowed  and  notice  thereof  was  sent  to  the  applicant  or  his 
agent ;  and  if  the  final  fee  is  not  paid  within  that  period  the 
patent  shall  be  withheld.  [See  prior  patent  statutes  :  Section 
23,  1870  ;  Section  3,  1863  ;  Section  8,  1836.] 

SECTION  4886.  Any  person  who  has  invented  or  discovered 
any  new  and  useful  art,  machine,  manufacture  or  composition 
of  matter,  or  any  new  and  useful  improvement  thereof,  not 
known  or  used  by  others  in  this  country,  and  not  patented  or 
described  in  any  printed  publication  in  this  or  any  foreign 
country,  before  his  invention  or  discovery  thereof,  and  not  in 
public  use  or  on  sale  for  more  than  two  years  prior  to  his  ap- 
plication, unless  the  same  is  proved  to  have  been  abandoned, 
may,  upon  payment  of  the  fees  required  by  law,  and  other 
due  proceedings  had,  obtain  a  patent  therefor.  [See  prior 
patent  statutes  :  Section  24,  1870  ;  Sections  6  and  7,  1836  ; 
Section  1,  1800  ;  Section  1,  1793.] 

SECTION  4887.  No  person  shall  be  debarred  from  receiving 
a  patent  for  his  invention  or  discovery,  nor  shall  any  patent 
be  declared  invalid,  by  reason  of  its  having  been  first  patented 
or  caused  to  be  patented  in  a  foreign  country,  unless  the  samo 
has  been  introduced  into  public  use  in  the  United  States  for  more 
than  two  years  prior  to  the  application.  But  every  patent  grant- 
ed for  an  invention  which  has  been  previously  patented  in  a 


662  THE    PATENT    STATUTES. 

foreign  country  shall  be  so  limited  as  to  expire  at  the  same  time 
with  the  foreign  patent,  or,  if  there  be  more  than  one,  at  the 
same  time  with  the  one  having  the  shortest  term,  and  in  no  case 
shall  it  be  in  force  more  than  seventeen  years.  [See  prior 
patent  statutes  :  Section  25,  1870  ;  Section  6,  1839  ;  Section 
8,  1836.] 

SECTION  4888.  Before  any  inventor  or  discoverer  shall  re- 
ceive a  patent  for  his  invention  or  discovery,  he  shall  make 
application  therefor,  in  writing,  to  the  Commissioner  of  Pat- 
ents, and  shall  file  in  the  Patent-Office  a  written  description 
of  the  same,  and  of  the  manner 'and  process  of  making,  con- 
structing, compounding,  and  using  it,  in  such  full,  clear,  con- 
cise, and  exact  terms  as  to  enable  any  person  skilled  in  the  art 
or  science  to  which  it  appertains,  or  with  which  it  is  most 
nearly  connected,  to  make,  construct,  compound  and  use  the 
same  ;  and  in  case  of  a  machine,  he  shall  explain  the  principle 
thereof,  and  the  best  mode  in  which  he  has  contemplated  ap- 
plying that  principle,  so  as  to  distinguish  it  from  other  inven- 
tions ;  and  he  shall  particularly  point  out  and  distinctly  claim, 
the  part,  improvement,  or  combination  which  he  claims  as  his 
invention  or  discovery.  The  specification  and  claim  shall  be 
signed  by  the  inventor  and  attested  by  two  witnesses.  [See 
prior  patent  statutes  :  Section  26,  1870  ;  Section  6,  1836  ; 
Section  1,  1793  ;  Section  2,  1790.] 

SECTION  4889.  When  the  nature  of  the  case  admits  of  draw- 
ings, the  applicant  shall  furnish  one  copy,  signed  by  the  in- 
ventor or  his  attorney  in  fact,  and  attested  by  two  witnesses, 
which  shall  be  filed  in  the  Patent- Office,  and  a  copy  of  the 
drawing,  to  be  furnished  by  the  Patent-Office,  shall  be  at- 
tached to  the  patent  as  a  part  of  the  specification.  [See  prior 
patent  statutes  :  Section  27,  1870  ;  Section  6,  1837 ;  Section. 
6,  1836  ;  Section  3,  1793.] 

SECTION  4890.  When  the  invention  or  discovery  is  of  a  com- 
position of  matter,  the  applicant,  if  required  by  the  Commis- 
sioner, shall  furnish  specimens  of  ingredients  and  of  the  com- 
position, sufficient  in  quantity  for  the  purpose  of  experiment. 
[See  prior  patent  statutes  :  Section  28, 1870  ;  Section  6,  1836  ; 
Section  3,  1793.] 


THE    REVISED   STATUTES.  663 

SECTION  4891.  In  all  cases  which  admit  of  representation  by 
model,  the  applicant,  if  required  by  the  Commissioner,  shall 
furnish  a  model  of  convenient  size  to  exhibit  advantageously 
the  several  parts  of  his  invention  or  discovery.  [See  prior 
patent  statutes  :  Section  29,  1870  ;  Section  6,  1836  ;  Section  3, 
1793  ;  Section  2,  1790.] 

SECTION  4892.  The  applicant  shall  make  oath  that  he  does 
verily  believe  himself  to  be  the  original  and  first  inventor  or 
discoverer  of  the  art,  machine,  manufacture,  composition,  or 
improvement  for  which  he  solicits  a  patent  ;  that  he  does  not 
know  and  does  not  believe  that  the  same  was  ever  before 
known  or  used  ;  and  shall  state  of  what  country  lie  is  a  citi- 
zen. Such  oath  may  be  made  before  any  person  within  the 
United  States  authorized  by  law  to  administer  oaths,  or  when 
the  applicant  resides  in  a  foreign  country,  before  any  minister, 
charge  d"1  affaires,  consul,  or  commercial  agent,  holding  com- 
mission under  the  Government  of  the  United  States,  or  before 
any  notary  public  of  the  foreign  country  in  which  the  appli- 
cant may  be.  [See  prior  patent  statutes  :  Section  30,  1870  ; 
Section  4,  1842  ;  Section  6,  1836  ;  Section  3,  1793.] 

SECTION  4893.  On  the  filing  of  any  such  application  and  the 
payment  of  the  fees  required  by  law,  the  Commissioner  of 
Patents  shall  cause  an  examination  to  be  made  of  the  alleged 
new  invention  or  discovery  ;  and  if  on  such  examination  it 
shall  appear  that  the  claimant  is  justly  entitled  to  a  patent 
under  the  law,  and  that  the  same  is  sufficiently  useful  and  im- 
portant, the  Commissioner  shall  issue  a  patent  therefor.  [See 
prior  patent  statutes  :  Section  31,  1870  ;  Section  7,  1836  ; 
Section  1,  1790.] 

SECTION  4894.  All  applications  for  patents  shall  be  com- 
pleted and  prepared  for  examination  within  two  years  after 
the  filing  of  the  application,  and  in  default  thereof,  or  upon 
failure  of  the  applicant  to  prosecute  the  same  within  two  years 
after  any  action  therein,  of  which  notice  shall  have  been  given 
to  the  applicant,  they  shall  be  regarded  as  abandoned  by  the 
parties  thereto,  unless  it  be  shown  to  the  satisfaction  of  the 
Commissioner  of  Patents  that  such  delay  was  unavoidable. 
[See  prior  patent  statutes:  Section  32,  1870  ;  Section  12,  1861.1 


664  THE    PATENT    STATUTES. 

SECTION  4895.  Patents  may  be  granted  and  issued  or  re- 
issued to  the  assignee  of  the  inventor  or  discoverer  ;  but  the 
assignment  must  first  be  entered  of  record  in  the  Patent- 
Office.  And  in  all  cases  of  an  application  by  an  assignee  for 
the  issue  of  a  patent,  the  application  shall  be  made  and  the 
specification  sworn  to  by  the  inventor  or  discoverer  ;  and  in 
all  cases  of  an  application  for  a  re-issue  of  any  patent,  the 
application  must  be  made  and  the  corrected  specification  signed 
by  the  inventor  or  discoverer,  if  he  is  living,  unless  the  patent 
was  issued  and  the  assignment  made  before  the  eighth  day  of 
July,  eighteen  hundred  and  seventy.  [See  prior  patent  stat- 
utes :  Section  33,  1870  ;  Section  6,  1837.] 

SECTION  4896.  When  any  person,  having  made  any  new  in- 
vention or  discovery  for  which  a  patent  might  have  been 
granted,  dies  before  a  patent  is  granted,  the  right  of  applying 
for  and  obtaining  the  patent  shall  devolve  on  his  executor  or 
administrator,  in  trust  for  the  heirs  at  law  of  the  deceased,  in 
case  he  shall  have  died  intestate  ;  or  if  he  shall  have  left  a 
will,  disposing  of  the  same,  then  in  trust  for  his  devisees,  in 
as  full  manner  and  on  the  same  terms  and  conditions  as  the 
same  might  have  been  claimed  or  enjoyed  by  him  in  his  life 
time  ;  and  when  the  application  is  made  by  such  legal  repre- 
sentatives, the  oath  or  affirmation  required  to  be  made  shall  be 
so  varied  in  form  that  it  can  be  made  by  them.  [See  prior 
patent  statutes  :  Section  34,  1870  ;  Section  10,  1836  ;  Sec- 
tion 2,  1800.] 

SECTION  4897.  Any  person  who  has  an  interest  in  an  inven- 
tion or  discovery,  whether  as  inventor,  discoverer,  or  assignee, 
for  which  a  patent  was  ordered  to  issue  upon  the  payment  of 
the  final  fee,  but  who  fails  to  make  payment  thereof  within 
six  months  from  the  time  at  which  it  was  passed  and  allowed, 
and  notice  thereof  was  sent  to  the  applicant  or  his  agent,  shall 
have  a  right  to  make  an  application  for  a  patent  for  such  in- 
vention or  discovery  the  same  as  in  the  case  of  an  original  ap- 
plication. But  such  second  application  must  be  made  within 
two  years  after  the  allowance  of  the  original  application.  But 
no  person  shall  be  held  responsible  in  damages  for  the  manu- 
facture or  use  of  any  article  or  thing  for  which  a  patent  was 


THE   REVISED   STATUTES.  665 

ordered  to  issue  under  such  renewed  application  prior  to  the 
issue  of  the  patent.  And  upon  the  hearing  of  renewed  appli- 
cations preferred  under  this  section,  abandonment  shall  be 
considered  as  a  question  of  fact.  [See  prior  patent  statutes  : 
Section  35,  1870  ;  Section  1,  1865  ;  Section  1,  1864.] 

SECTION  4898.  Every  patent  or  any  interest  therein  shall  be 
assignable  in  law,  by  an  instrument  in  writing  ;  and  the  pat- 
entee  or  his  assigns  or  legal  representatives  may,  in  like  man- 
ner, grant  and  convey  an  exclusive  right  under  his  patent  to 
the  whole  or  any  specified  part  of  the  United  States.  An 
assignment,  grant,  or  conveyance  shall  be  void  as  against  any 
subsequent  purchaser  or  mortgagee  for  a  valuable  considera- 
tion, without  notice,  unless  it  is  recorded  in  the  Patent-Office 
within  three  months  from  the  date  thereof.  [See  prior  patent 
statutes  :  Section  36,  1870  ;  Section  11,  1836  ;  Section  4, 
1793.] 

SECTION  4899.  Every  person  who  purchases  of  the  inventor 
or  discoverer,  or  with  his  knowledge  and  consent  constructs 
any  newly  invented  or  discovered  machine,  or  other  patentable 
article,  prior  to  the  application  by  the  inventor  or  discoverer 
for  a  patent,  or  who  sells  or  uses  one  so  constructed,  shall 
have  the  right  to  use,  and  vend  to  others  to  be  used,  the 
specific  thing  so  made  or  purchased,  without  liability  there- 
for. [See  prior  patent  statutes  :  Section  37,  1870  ;  Section 
7,  1839.] 

SECTION  4900.  It  shall  be  the  duty  of  all  patentees,  and 
their  assigns  and  legal  representatives,  and  of  all  persons  mak- 
ing or  vending  any  patented  article  for  or  under  them,  to  give 
sufficient  notice  to  the  public  that  the  same  is  patented  ;  either 
by  fixing  thereon  the  word  u  patented,"  together  with  the  day 
and  year  the  patent  was  granted  ;  or  when,  from  the  character 
of  the  article,  this  cannot  be  done,  by  fixing  to  it,  or  to  the 
package  wherein  one  or  more  of  them  is  inclosed,  a  label  con- 
taining the  like  notice  ;  and  in  any  suit  for  infringement,  by 
the  party  failing  so  to  mark,  no  damages  shall  be  recovered  by 
the  plaintiff,  except  on  proof  that  the  defendant  was  duly 
notified  of  the  infringement,  and  continued,  after  such  notice, 
to  make,  use,  or  vend  the  article  so  patented.  [Sec  prior 


666  THE    PATENT    STATUTES. 

patent  statutes  :  Section  38,  1870  ;  Section  13,  1861  ;  Section 
6,  1842.] 

SECTION  4901.  Every  person  who,  in  any  manner,  marks 
upon  anything  made,  used,  or  sold  by  him  for  which  he  has 
not  obtained  a  patent,  the  name  or  any  imitation  of  the  name 
of  any  person  who  has  obtained  a  patent  therefor  without  the 
consent  of  such  patentee,  or  his  assigns  or  legal  representa- 
tives ;  or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  such 
patented  article  the  word  "patent"  or  "patentee,"  or  the 
words  "  letters-patent,"  or  any  word  of  like  import,  with  in- 
tent to  imitate  or  counterfeit  the  mark  or  device  of  the  pat- 
entee, without  having  the  license  or  consent  of  such  patentee 
or  his  assigns  or  legal  representatives  ;  or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  unpat- 
ented  article  the  word  "  patent,"  or  any  word  importing  that 
the  same  is  patented,  for  the  purpose  of  deceiving  the  public, 
shall  be  liable,  for  every  such  offence,  to  a  penalty  of  not  less 
than  one  hundred  dollars,  with  costs  ;  one  half  of  said  penalty 
to  the  person  who  shall  sue  for  the  same,  and  the  other  to  the 
use  of  the  United  States,  to  be  recovered  by  suit  in  any  dis- 
trict court  of  the  United  States,  within  whose  jurisdiction  such 
offence  may  have  been  committed.  [See  prior  patent  stat- 
utes :  Section  39,  1870  ;  Section  5,  1842.] 

SECTION  4902.  Any  citizen  of  the  United  States  who  makes 
any  new  invention  or  discovery,  and  desires  further  time  to 
mature  the  same,  may,  on  payment  of  the  fees  required  by 
law,  file  in  tne  Patent-Office  a  caveat  setting  forth  the  design 
thereof,  and  of  its  distinguishing  characteristics,  and  praying 
protection  of  his  right  until  he  shall  have  matured  his  inven- 
tion. Such  caveat  shall  be  filed  in  the  confidential  archives  oi 
the  office  and  preserved  in  secrecy,  and  shall  be  operative  for 
the  term  of  one  year  from  the  filing  thereof  ;  and  if  applica- 
tion is  made  within  the  year  by  any  other  person  for  a  patent 
with  which  such  caveat  would  in  any  manner  interfere,  the 
Commissioner  shall  deposit  the  description,  specification, 
drawings,  and  model  of  such  application  in  like  manner  in  the 
confidential  archives  of  the  office,  and  give  notice  thereof,  by 


THE   EEVI8ED   STATUTES.  667 

mail,  to  the  person  by  whom  the  caveat  was  filed.  If  such 
person  desires  to  avail  himself  of  his  caveat,  he  shall  file  his 
description,  specifications,  drawings,  and  model  within  three 
months  from  the  time  of  placing  the  notice  in  the  post-office 
in  Washington,  with  the  usual  time  required  for  transmitting 
it  to  the  caveator  added  thereto  ;  which  time  shall  be  indorsed 
on  the  notice.  An  alien  shall  have  the  privilege  herein 
granted,  if  he  has  resided  in  the  United  States  one  year  next 
preceding  the  filing  of  his  caveat,  and  has  made  oath  of  his 
intention  to  become  a  citizen.  [See  prior  patent  statutes  : 
Section  40,  1870  ;  Section  9,  1861  ;  Section  12,  1836.] 

SECTION  4903.  Whenever,  on  examination,  any  claim  for  a 
patent  is  rejected,  the  Commissioner  shall  notify  the  applicant 
thereof,  giving  him  briefly  the  reasons  for  such  rejection,  to- 
gether with  such  information  and  references  as  may  be  useful 
in  judging  of  the  propriety  of  renewing  his  application  or  of 
altering  his  specification  ;  and  if,  after  receiving  such  notice, 
the  applicant  persists  in  his  claim  for  a  patent,  with  or  without 
altering  his  specifications,  the  Commissioner  shall  order  a  re- 
examination  of  the  case.  [See  prior  patent  statutes  :  Section 
41,  1870  ;  Section  7,  1836.] 

SECTION  4904.  Whenever  an  application  is  made  for  a  patent 
which,  in  the  opinion  of  the  Commissioner,  would  interfere 
with  any  pending  application,  or  with  any  unexpired  patent, 
he  shall  give  notice  thereof  to  the  applicants,  or  applicant  and 
patentee,  as  the  case  may  be,  and  shall  direct  the  primary  ex- 
aminer to  proceed  to  determine  the  question  of  priority  of 
invention.  And  the  Commissioner  may  issue  a  patent  to  the 
party  who  is  adjudged  the  prior  inventor,  unless  the  adverse 
party  appeals  from  the  decision  of  the  primary  examiner,  or  of 
the  board  of  examiners-in-chief,  as  the  case  may  be,  within 
such  time,  not  less  than  twenty  days,  as  the  Commissioner 
shall  prescribe.  [See  prior  patent  statutes  :  Section  42,  1870  ; 
Section  8,  1836  ;  Section  9,  1793.] 

SECTION  4905.  The  Commissioner  of  Patents  may  establish 
rules  for  taking  affidavits  and  depositions  required  in  cases 
pending  in  the  Patent-Office,  and  such  affidavits  and  deposi- 
tions may  be  taken  before  any  officer  authorized  by  law  to  take 


THE    PATENT    STATUTES. 


depositions  to  be  used  in  the  courts  of  the  United  States,  or  of 
the  State  where  the  officer  resides.  [See  prior  patent  statutes  : 
Section  43,  1870  ;  Section  1,  March  3,  1861  ;  Section  12, 
1839.] 

SECTION  4906.  The  clerk  of  any  court  of  the  United  States, 
for  any  district  or  Territory  wherein  testimony  is  to  be  taken 
for  use  in  any  contested  case  pending  in  the  Patent-Office, 
shall,  upon  the  application  of  any  party  thereto,  or  of  his 
agent  or  attorney,  issue  a  subpoena  for  any  witness  residing  or 
being  within  such  district  or  Territory,  commanding  him  to 
appear  and  testify  before  any  officer  in  such  district  or  Terri- 
tory authorized  to  take  depositions  and  affidavits,  at  any  time 
and  place  in  the  subpoena  stated.  But  no  witness  shall  be 
required  to  attend  at  any  place  more  than  forty  miles  from 
the  place  where  the  subpoena  is  served  upon  him.  [See  prior 
patent  statutes  :  Section  44.  1870  ;  Section  1,  1861.] 

SECTION  4907.  Every  witness  duly  subpoenaed  and  in  attend- 
ance shall  be  allowed  the  same  fees  as  are  allowed  to  witnesses 
attending  the  courts  of  the  United  States.  [See  prior  patent 
statutes  :  Section  45,  1870  ;  Section  1,  1861.] 

SECTION  4908.  Whenever  any  witness,  after  being  duly 
served  with  such  subpoena,  neglects  or  refuses  to  appear,  or 
after  appearing  refuses  to  testify,  the  judge  of  the  court  whose 
clerk  issued  the  subpoena  may,  on  proof  of  such  neglect  or 
refusal,  enforce  obedience  to  the  process,  or  punish  the  dis- 
obedience, as  in  other  like  cases.  But  no  witness  shall  be 
deemed  guilty  of  contempt  for  disobeying  such  subpoena,  un- 
less his  fees  and  travelling  expenses  in  going  to,  returning 
from,  and  one  day's  attendance  at  the  place  of  examination, 
are  paid  or  tendered  him  at  the  time  of  the  service  of  the 
subpoena  ;  nor  for  refusing  to  disclose  any  secret  invention  or 
discovery  made  or  owned  by  himself.  [See  prior  patent  stat- 
utes :  Sections  44  and  45,  1870  ;  Section  1,  1861.] 

SECTION  4909.  Every  applicant  for  a  patent  or  for  the  re- 
issue of  a  patent,  any  of  the  claims  of  which  have  been  twice 
rejected,  and  every  party  to  an  interference,  may  appeal  from 
the  decision  of  the  primary  examiner,  or  of  the  examiner  in 
charge  of  interferences  in  such  case,  to  the  board  of  examiners- 


THE   REVISED   STATUTES.  660 

in-chief  ;    having  once  paid  the  fee  for  such  appeal.     [See 
prior  patent  statutes  :  Section  46,  1870  ;  Section  1,  1866.] 

SECTION  4910.  If  such  party  is  dissatisfied  with  the  decision 
of  the  examiners-in  chief,  he  may,  on  payment  of  the  fee  pre- 
scribed, appeal  to  the  Commissioner  in  person.  [See  prior 
patent  statutes  :  Section  47,  1870  ;  Section  2,  1861.] 

SECTION  4911.  If  such  party,  except  a  party  to  an  interfer- 
ence, is  dissatisfied  with  the  decision  of  the  Commissioner,  he 
may  appeal  to  the  Supreme  Court  of  the  District  of  Columbia, 
sitting  in  bane.  [See  prior  patent  statutes  :  Section  48,  1870  ; 
Section  1,  1852  ;  Section  11,  1839.] 

SECTION  4912.  When  an  appeal  is  taken  to  the  Supreme 
Court  of  the  District  of  Columbia,  the  appellant  shall  give 
notice  thereof  to  the  Commissioner,  and  file  in  the  Patent- 
Office,  within  such  time  as  the  Commissioner  shall  appoint, 
his  reasons  of  appeal,  specifically  set  forth  in  writing.  [See 
prior  patent  statute  :  Section  49,  1870.] 

SECTION  4913.  The  court  shall,  before  hearing  such  appeal, 
give  notice  to  the  Commissioner  of  the  time  and  place  of  the 
hearing,  and  on  receiving  such  notice  the  Commissioner  shall 
give  notice  of  such  time  and  place  in  such  manner  as  the  court 
may  prescribe,  to  all  parties  who  appear  to  be  interested 
therein.  The  party  appealing  shall  lay  before  the  court  certi- 
fied copies  of  all  the  original  papers  and  evidence  in  the  case, 
and  the  Commissioner  shall  furnish  the  court  with  the  grounds 
of  his  decision,  fully  set  forth  in  writing,  touching  all  the 
points  involved  by  the  reasons  of  appeal.  And  at  the  request 
of  any  party  interested,  or  of  the  court,  the  Commissioner  and 
the  examiners  may  be  examined  under  oath,  in  explanation  of 
the  principles  of  the  thing  for  which  a  patent  is  demanded. 
[See  prior  patent  statute  :  Section  51,  1870.] 

SECTION  4914.  The  court,  on  petition,  shall  hear  and  deter- 
mine such  appeal,  and  revise  the  decision  appealed  from  in  a 
summary  way,  on  the  evidence  produced  before  the  Commis- 
sioner, at  such  early  and  convenient  time  as  the  court  may  ap- 
point ;  and  the  revision  shall  be  confined  to  the  points  set 
forth  in  the  reasons  of  appeal.  After  hearing  the  case  the 
court  shall  return  to  the  Commissioner  a  certificate  of  its  pro- 


670  THE    PATENT    STATUTES. 

ceedings  and  decision,  which  shall  be  entered  of  record  in  the 
Patent-Office,  and  shall  govern  the  further  proceedings  in  the 
case.  But  no  opinion  or  decision  of  the  court  in  any  such  case 
shall  preclude  any  person  interested  from  the  right  to  contest 
the  validity  of  such  patent  in  any  court  wherein  the  same  may 
be  called  in  question.  [See  prior  patent  statute  :  Section  50, 
1870.] 

SECTION  4915.  Whenever  a  patent  on  application  is  refused, 
either  by  the  Commissioner  of  Patents  or  by  the  Supreme 
Court  of  the  District  of  Columbia  upon  appeal  from  the  Com- 
missioner, the  applicant  may  have  remedy  by  bill  in  equity  ; 
and  the  court  having  cognizance 'thereof,  on  notice  to  adverse 
parties  and  other  due  proceedings  had,  may  adjudge  that  such 
applicant  is  entitled,  according  to  law,  to  receive  a  patent  for 
his  invention,  as  specified  in  his  claim,  or  for  any  part  there- 
of, as  the  facts  in  the  case  may  appear.  And  such  adjudica- 
tion, if  it  be  in  favor  of  the  right  of  the  applicant,  shall 
authorize  the  Commissioner  to  issue  such  patent  on  the  appli- 
cant filing  in  the  Patent-Office  a  copy  of  the  adjudication,  and 
otherwise  complying  with  the  requirements  of  law.  In  all 
cases,  where  there  is  no  opposing  party,  a  copy  of  the  bill 
shall  be  served  on  the  Commissioner  ;  and  all  the  expenses  of 
the  proceeding  shall  be  paid  by  the  applicant,  whether  the 
final  decision  is  in  his  favor  or  not.  [See  Revised  Statutes 
and  prior  patent  statutes  :  Section  52,  1870  ;  Section  10, 
1839.] 

SECTION  4916.  Whenever  any  patent  is  inoperative  or  in- 
valid, by  reason  of  a  defective  or  insufficient  specification,  or 
by  reason  of  the  patentee  claiming  as  his  own  invention  or  dis- 
covery more  than  he  had  a  right  to  claim  as  new,  if  the  error 
has  arisen  by  inadvertence,  accident,  or  mistake,  and  without 
any  fraudulent  or  deceptive  intention,  the  Commissioner  shall, 
on  the  surrender  of  such  patent  and  the  payment  of  the  duty 
required  by  law,  cause  a  new  patent  for  the  same  invention, 
and  in  accordance  with  the  corrected  specification,  to  be  issued 
to  the  patentee,  or,  in  the  case  of  his  death  or  of  an  assign- 
ment of  the  whole  or  any  undivided  part  of  the  original  pat- 
ent, then  to  his  executors,  administrators,  or  assigns,  for  the 


THE   REVISED   STATUTES.  671 

nnexpired  part  of  the  term  of  the  original  patent.  Such  sur- 
render shall  take  effect  upon  the  issue  of  the  amended  patent. 
The  Commissioner  may,  in  his  discretion,  cause  several  patents 
to  be  issued  for  distinct  and  separate  parts  of  the  thing  pat- 
ented, upon  demand  of  the  applicant,  and  upon  payment  of 
the  required  fee  for  a  re-issue  for  each  of  such  re-issued  let- 
ters-patent. The  specifications  and  claim  in  every  such  case 
shall  be  subject  to  revision  and  restriction  in  the  same  manner 
as  original  applications  are.  Every  patent  so  re-issued,  to- 
gether with  the  corrected  specification,  shall  have  the  same 
effect  and  operation  in  law,  on  the  trial  of  all  actions  for  causes 
thereafter  arising,  as  if  the  same  had  been  originally  filed  in 
such  corrected  form  ;  but  no  new  matter  shall  be  introduced 
into  the  specification,  nor  in  case  of  a  machine-patent  shall  the 
model  or  drawings  be  amended,  except  each  by  the  other  ;  but 
when  there  is  neither  model  nor  drawing,  amendments  may  be 
made  upon  proof  satisfactory  to  the  Commissioner  that  such 
new  matter  or  amendment  was  a  part  of  the  original  inven- 
tion, and  was  omitted  from  the  specification  by  inadvertence, 
accident,  or  mistake,  as  aforesaid.  [See  prior  patent  statutes  : 
Section  53,  1870  ;  Sections  5  and  8,  1837  ;  Section  13,  1836  ; 
Section  3,  1832.] 

SECTION  4917.  Whenever,  through  inadvertence,  accident, 
or  mistake,  and  without  any  fraudulent  or  deceptive  intention, 
a  patentee  has  claimed  more  than  that  of  which  he  was  the 
original  or  first  inventor  or  discoverer,  his  patent  shall  be  valid 
for  all  that  part  which  is  truly  and  justly  his  own,  provided 
the  same  is  a  material  or  substantial  part  of  the  thing  pat- 
ented ;  and  any  such  patentee,  his  heirs  or  assigns,  whether 
of  the  whole  or  any  sectional  interest  therein,  may,  on  pay- 
ment of  the  fee  required  by  law,  make  disclaimer  of  such 
parts  of  the  thing  patented  as  he  shall  not  choose  to  claim  or 
to  hold  by  virtue  of  the  patent  or  assignment,  stating  therein 
the  extent  of  his  interest  in  such  patent.  Such  disclaimer 
shall  be  in  writing,  attested  by  one  or  more  witnesses,  and 
recorded  in  the  Patent-Office  ;  and  it  shall  thereafter  be  con- 
sidered as  part  of  the  original  specification  to  the  extent  of  the 
interest  possessed  by  the  claimant  and  by  those  claiming  under 


672  THE    PATENT    STATUTES. 

him  after  the  record  thereof.  But  no  such  disclaimer  shall 
affect  any  action  pending  at  the  time  of  its  being  filed,  except 
so  far  as  may  relate  to  the  question  of  unreasonable  neglect  or 
delay  in  filing  it.  [See  prior  patent  statutes  :  Section  54, 
1870  ;  Section  7,  1837.] 

SECTION  4918.  Whenever  there  are  interfering  patents,  any 
person  interested  in  any  one  of  them,  or  in  the  working  of  the 
invention  claimed  under  either  of  them,  may  have  relief 
against  the  interfering  patentee,  and  all  parties  interested 
under  him,  by  suit  in  equity  against  the  owners  of  the  inter- 
fering patent  ;  and  the  court,  on  notice  to  adverse  parties, 
and  other  due  proceedings  had  according  to  the  course  of 
equity,  may  adjudge  and  declare  either  of  the  patents  void  in 
whole  or  in  part,  or  inoperative,  or  invalid  in  any  particular 
part  of  the  United  States,  according  to  the  interest  of  the 
parties  in  the  patent  or  the  invention  patented.  But  no  such 
judgment  or  adjudication  shall  affect  the  right  of  any  person 
except  the  parties  to  the  suit  and  those  deriving  title  under 
them  subsequent  to  the  rendition  of  such  judgment.  [See 
prior  patent  statutes  :  Section  58,  1870  ;  Section  16,  1836.] 

SECTION  4919.  Damages  for  the  infringement  of  any  patent 
may  be  recovered  by  action  on  the  case,  in  the  name  of  the 
party  interested,  either  as  patentee,  assignee,  or  grantee.  And 
whenever  in  any  such  action  a  verdict  is  rendered  for  the 
plaintiff,  the  court  may  enter  judgment  thereon  for  any  sum 
above  the  amount  found  by  the  verdict  as  the  actual  damages 
sustained,  according  to  the  circumstances  of  the  case,  not  ex- 
ceeding three  times  the  amount  of  such  verdict,  together  with 
the  costs.  [See  prior  patent  statutes  :  Section  55,  1870  ;  Sec- 
tion 14,  1836  ;  Section  3,  1800  ;  Section  5,  1793  ;  Section  4, 
1790.] 

SECTION  4920.  In  any  action  for  infringement  the  defendant 
may  plead  the  general  issue,  and  having  given  notice  in  writ- 
ing to  the  plaintiff  or  his  attorney,  thirty  days  before,  may 
prove  on  trial  any  one  or  more  of  the  following  special  mat- 
ters : 

First.  That  for  the  purpose  of  deceiving  the  public  the  de- 
scription and  specification  filed  by  the  patentee  in  the  Patent- 


THE   REVISED   STATUTES.  673 

Office  was  made  to  contain  less  than  the  whole  truth  relative 
to  his  invention  or  discovery,  or  more  than  is  necessary  to  pro- 
duce the  desired  effect ;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  obtained 
the  patent  for  that  which  was  in  fact  invented  by  another, 
who  was  using  reasonable  diligence  in  adapting  and  perfecting 
the  same  ;  or, 

Third.  That  it  had  been  patented  or  described  in  some 
printed  publication  prior  to  his  supposed  invention  or  discov". 
ery  thereof  ;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor  or 
discoverer  of  any  material  and  substantial  part  of  the  thing 
patented  ;  or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this 
country  for  more  than  two  years  before  his  application  for  a 
patent,  or  had  been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowledge, 
or  use  of  the  thing  patented,  the  defendant  shall  state  the 
names  of  patentees  and  the  dates  of  their  patents,  and  when 
granted,  and  the  names  and  residences  of  the  persons  alleged 
to  have  invented,  or  to  have  had  the  prior  knowledge  of  the 
thing  patented,  and  where  and  by  whom  it  had  been  used  ; 
and  if  any  one  or  more  of  the  special  matters  alleged  shall  be 
found  for  the  defendant,  judgment  shall  be  rendered  for  him 
with  costs.  And  the  like  defences  may  be  pleaded  in  any  suit 
in  equity  for  relief  against  an  alleged  infringement  ;  and 
proofs  of  the  same  may  be  given  upon  like  notice  in  the  an- 
swer of  the  defendant,  and  with  the  like  effect.  [See  prior 
patent  statutes  :  Section  61,  1870  ;  Section  15,  1836  ;  Section 
6,  1793  ;  Section  6,  1790.] 

SECTION  4921.  The  several  courts  vested  with  jurisdiction  of 
cases  arising  under  the  patent  laws  shall  have  power  to  grant 
injunctions  according  to  the  course  and  principles  of  courts  of 
equity,  to  prevent  the  violation  of  any  right  secured  by  pat- 
ent, on  such  terms  as  the  court  may  deem  reasonable  ;  and 
upon  a  decree  being  rendered  in  any  such  case  for  an  infringe- 
ment, the  complainant  shall  be  entitled  to  recover,  in  addition 
to  the  profits  to  be  accounted  for  by  the  defendant,  the  dam- 


674  THE    PATENT    STATUTES. 

ages  the  complainant  has  sustained  thereby  ;  and  the  court 
shall  assess  the  same  or  cause  the  same  to  be  assessed  under  its 
direction.  And  the  court  shall  have  the  same  power  to  in- 
crease such  damages,  in  its  discretion,  as  is  given  to  increase 
the  damages  found  by  verdicts  in  actions  in  the  nature  of 
actions  of  trespass  upon  the  case.  [See  prior  patent  statutes  : 
Section  55,  1870  ;  Section  17,  1836  ;  Section  1,  1819.] 

SECTION  4922.  Whenever,  through  inadvertence,  accident, 
or  mistake,  and  without  any  willful  default  or  intent  to  de- 
fraud or  mislead  the  public,  a  patentee  has,  in  his  specifica- 
tion, claimed  to  be  the  original  and  first  inventor  or  discoverer 
of  any  material  or  substantial  part  of  the  thing  patented,  of 
which  he  was  not  the  original  and  first  inventor  or  discoverer, 
every  such  patentee,  his  executors,  administrators,  and 
assigns,  whether  of  the  whole  or  any  sectional  interest  in  the 
patent,  may  maintain  a  suit  at  law  or  in  equity,  for  the  in- 
fringement of  any  part  thereof,  which  was  bona  fide  his  own, 
if  it  is  a  material  and  substantial  part  of  the  thing  patented, 
and  definitely  distinguishable  from  the  parts  claimed  without 
right,  notwithstanding  the  specifications  may  embrace  more 
than  that  of  which  the  patentee  was  the  first  inventor  or  dis- 
coverer. But  in  every  such  case  in  which  a  judgment  or  de- 
cree shall  be  rendered  for  the  plaintiff,  no  costs  shall  be  recov- 
ered unless  the  proper  disclaimer  has  been  entered  at  the 
Patent-Office  before  the  commencement  of  the  suit.  But  no 
patentee  shall  be  entitled  to  the  benefits  of  this  section  if  he 
has  unreasonably  neglected  or  delayed  to  enter  a  disclaimer. 
[See  prior  patent  statutes  :  Section  60,  1870  ;  Section  9,  1837.] 

SECTION  4923.  Whenever  it  appears  that  a  patentee,  at  the 
time  of  making  his  application  for  the  patent,  believed  himself 
to  be  the  original  and  first  inventor  or  discoverer  of  the  thing 
patented,  the  same  shall  not  be  held  to  be  void  on  account  of 
the  invention  or  discovery,  or  any  part  thereof,  having  been 
known  or  used  in  a  foreign  country,  before  his  invention  or 
discovery  thereof,  if  it  had  not  been  patented  or  described  in 
a  printed  publication.  [See  prior  patentstatut.es  :  Section  62, 
1870  ;  Section  15,  1836.] 

SECTION  4924.  Where  the  patentee  of  any  invention  or  dis- 


THE  REVISED   STATUTES  675 

covery,  the  patent  for  which  was  granted  prior  to  the  second 
day  of  March,  eighteen  hundred  and  sixty-one,  sha1!  desire  an 
extension  of  this  patent  beyond  the  original  term  of  its  limita- 
tion, he  shall  make  application  therefor,  in  writing,  to  the 
Commissioner  of  Patents,  setting  forth  the  reasons  why  such 
extension  should  be  granted  ;  and  he  shall  also  furnish  a 
written  statement  under  oath  of  the  ascertained  value  of  the 
invention  or  discovery,  and  of  his  receipts  and  expenditures  on 
account  thereof,  sufficiently  in  detail  to  exhibit  a  true  and 
faithful  account  of  the  loss  and  profit  in  any  manner  accruing 
to  him  by  reason  of  the  invention  or  discovery.  Such  appli- 
cation shall  be  tiled  not  more  than  six  months  nor  less  than 
ninety  days  before  the  expiration  of  the  original  term  of  the 
patent ;  and  no  extension  shall  be  granted  after  the  expiration  of 
the  original  term.  [See  prior  patent  statutes :  Section  63,  1870 ; 
Section  1,  1848  ;  Section  18,  1836  ;  Section  2,  July  3,  1832.] 

SECTION  4925.  Upon  the  receipt  of  such  application,  and 
the  payment  of  the  fees  required  by  law,  the  Commissioner 
shall  cause  to  be  published  in  one  newspaper  in  the  city  of 
Washington,  and  in  such  other  papers  published  in  the  section 
of  the  country  most  interested  adversely  to  the  extension  of 
the  patent  as  he  may  deem  proper,  for  at  least  sixty  days  prior 
to  the  day  set  for  hearing  the  case,  a  notice  of  such  applica- 
tion, and  of  the  time  and  place  when  and  where  the  same  will 
be  considered,  that  any  person  may  appear  and  show  cause 
why  the  extension  should  not  be  granted.  [See  prior  patent 
statutes  :  Section  64,  1870  ;  Section  18,  1836.] 

SECTION  4926.  Upon  the  publication  of  the  notice  of  an  ap- 
plication for  an  extension,  the  Commissioner  shall  refer  the 
case  to  the  principal  examiner  having  charge  of  the  class  of 
inventions  to  which  it  belongs,  who  shall  make  the  Commis- 
sioner a  full  report  of  the  case,  stating  particularly  whether 
the  invention  or  discovery  was  new  and  patentable  when  the 
original  patent  was  granted.  [See  prior  patent  statutes  :  Sec- 
tion 65,  1870  ;  Section  1.  1848  ;  Section  18,  1836.] 

SECTION  4927.  The  Commissioner  shall,  at  the  time  and 
place  designated  in  the  published  notice,  hear  and  deckle  upon 
the  evidence  produced,  both  for  and  against  the  extension  ; 


676  THE    PATENT    STATUTES. 

and  if  it  shall  appear  to  the  satisfaction  of  the  Commissioner 
that  the  patentee,  without  neglect  or  fault  on  his  part,  has 
failed  to  obtain  from  the  use  and  sale  of  his  invention  or  dis- 
covery a  reasonable  remuneration  for  the  time,  ingenuity,  and 
expense  bestowed  upon  it,  and  the  introduction  of  it  into  use, 
and  that  it  is  just  and  proper,  having  due  regard  to  the  public 
interest,  that  the  term  of  the  patent  should  be  extended,  the 
Commissioner  shall  make  a  certificate  thereon,  renewing  and 
extending  the  patent  for  the  term  of  seven  years  from  the  ex- 
piration of  the  first  term.  Such  certificate  shall  be  recorded 
in  the  Patent- Office  ;  and  thereupon  such  patent  shall  have 
the  same  effect  in  law  as  though  it  had  been  originally  granted 
for  twenty-one  years.  [See  prior  patent  statutes  :  Section  66, 
1870  ;  Section  18,  1836.] 

SECTION  4928.  The  benefit  of  the  extension  of  a  patent  shall 
extend  to  the  assignees  and  grantees  of  the  right  to  use  the 
thing  patented,  to  the  extent  of  their  interest  therein.  [See 
prior  patent  statutes  :  Section  67,  1870  ;  Section  18,  1836.] 

SECTION  4929.  Any  person  who,  by  his  own  industry, 
genius,  efforts,  and  expense,  has  invented  and  produced  any 
new  and  original  design  for  a  manufacture,  bust,  statue,  alto- 
relievo,  or  bas-relief  ;  any  new  and  original  design  for  the 
printing  of  woollen,  silk,  cotton,  or  other  fabrics  ;  any  new 
and  original  impression,  ornament,  patent,  print,  or  picture  to 
be  printed,  painted,  cast,  or  otherwise  placed  on  or  worked 
into  any  article  of  manufacture  ;  or  any  new,  useful,  and  orig- 
inal shape  or  configuration  of  any  article  of  manufacture*,  the 
same  not  having  been  known  or  used  by  others  before  his  in- 
vention or  production  thereof,  or  patented  or  described  in  any 
printed  publication,  may,  upon  payment  of  the  fee  prescribed, 
and  other  due  proceedings  had  the  same  as  in  cases  of  inven- 
tions or  discoveries,  obtain  a  patent  therefor.  [See.prior  pat- 
ent statutes  :  Section  71,  1870  ;  Section  11,  March  2,  1861  ; 
Section  3,  1842.] 

SECTION  4930.  The  Commissioner  may  dispense  with  models 
of  designs  when  the  design  can  be  sufficiently  represented  by 
drawings  or  photographs.  [See  prior  patent  statute  :  Section 
72,  1870.] 


THE   REVISED   STATUTES.  677 

SECTION  4931.  Patents  for  designs  may  be  granted  for  the 
term  of  three  years  and  six  months,  or  for  seven  years,  or  for 
fourteen  years,  as  the  applicant  may,  in  his  application,  elect. 
[See  prior  patent  statutes  :  Section  73,  1870  ;  Section  11, 
1861  ;  Sections,  1842.] 

SECTION  4932.  Patentees  of  designs  issued  prior  to  the  sec- 
ond day  of  March,  eighteen  hundred  and  sixty -one,  shall  be 
entitled  to  extension  of  their  respective  patents  for  the  term 
of  seven  years,  in  the  same  manner  and  under  the  same 
restrictions  as  are  provided  for  the  extension  of  patents  for  in- 
ventions or  discoveries,  issued  prior  to  the  second  day  of 
March,  eighteen  hundred  and  sixty-one.  [See  prior  patent 
statutes  :  Section  74,  1870  ;  Section  11,  March  2,  1861.] 

SECTION  4933.  All  the  regulations  and  provisions  which 
apply  to  obtaining  or  protecting  patents  for  inventions  or  dis- 
coveries not  inconsistent  with  the  provisions  of  this  Title,  shall 
apply  to  patents  for  designs.  [See  prior  patent  statute  :  Sec- 
tion 76,  1870.  J 

SECTION  4934.  The  following  shall  be  the  rate  for  patent- 
fees  : 

On  filing  each  original  application  for  a  patent,  except  in 
design  cases,  fifteen  dollars. 

On  issuing  each  original  patent,  except  in  design  cases, 
twenty  dollars. 

In  design  cases  :  For  three  years  and  six  months,  ten  dol- 
lars ;  for  seven  years,  fifteen  dollars  ;  for  fourteen  years, 
thirty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  re-issue  of  a  patent,  thirty  dol- 
lars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty 
dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty  dollars. 

On  an  appeal  for  the  first  time  from  the  primary  examiners 
to  the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  Com- 
missioner, twenty  dollars. 


678  THE    PATENT    STATUTES. 

For  certified  copies  of  patents  and  other  papers,  including 
certified  printed  copies,  ten  cents  per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  attor- 
ney, or  other  paper,  of  three  hundred  words  or  under,  one 
dollar  ;  of  over  three  hundred  and  under  one  thousand  words, 
two  dollars  ;  of  over  one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making  them. 
[See  prior  patent  statutes  :  Section  2,  March  24,  1871  ;  Sec- 
tions 68  and  75,  1870  ;  Section  1,  1866  ;  Section  10,  March  2, 
1861  ;  Section  2,  1848  ;  Section  8,  1839  ;  Sections  4,  9,  11, 
1836  ;  Section  11,  1793  ;  Section  7,  1790.] 

SECTION  4935.  Patent-fees  may  be  paid  to  the  Commissioner 
of  Patents,  or  to  the  Treasurer  or  any  of  the  assistant  treas- 
urers of  the  United  States,  or  to  any  of  the  designated  deposi- 
taries,  national  banks,  or  receivers  of  public  money,  designated 
by  the  Secretary  of  the  Treasury  for  that  purpose  ;  and  such 
officer  shall  give  the  depositor  a  receipt  or  certificate  of  deposit 
therefor.  All  money  received  at  the  Patent -Office,  for  any 
purpose,  or  from  any  source  whatever,  shall  be  paid  into  the 
Treasury  as  received,  without  any  deduction  whatever.  [See 
prior  patent  statutes  :  Section  69,  1870  ;  Section  14,  1837.] 

SECTION  4936.  The  Treasurer  of  the  United  States  is  author- 
ized to  pay  back  any  sum  or  sums  of  money  to  any  person 
who  has  through  mistake  paid  the  same  into  the  Treasury,  or 
to  any  receiver  or  depositary,  to  the  credit  of  the  Treasury,  as 
for  fees  accruing  at  the  Patent  -Office,  upon  a  certificate 
thereof  being  made  to  the  Treasurer  by  the  Commissioner  of 
Patents.  [See  prior  patent  statutes  :  Section  69,  1870  ;  Sec- 
tion 1,  1842.] 

APPROVED  June  22,  1874. 

PATENT    ACT    OF    FEBRUARY    16,    1875. 

18  STATUTES  AT  LARGE,  PART  3,  316. 

Section  2  of  an   Act  to  facilitate  the  disposition  of  cases  in 
the  Supreme  Court  of  the  United  States,  and  for  other 
purposes. 
SECTION  2.   The  said  [circuit]  courts,  when  sitting  in  equity 


THE   PATENT  ACT   OF   1887.  679 

for  the  trial  of  patent  causes,  may  empanel  a  jury  of  not  less 
than  five  and  not  more  than  twelve  persons,  subject  to  such 
general  rules  in  the  premises,  as  may  from  time  to  time  be 
made  by  the  Supreme  Court,  and  submit  to  them  such  ques- 
tions of  fact  arising  in  such  cause  as  such  circuit  court  shall 
deem  expedient ;  and  the  verdict  of  such  jury  shall  be  treated 
and  proceeded  upon  in  the  same  manner  and  with  the  same 
effect  as  in  the  case  of  issues  sent  from  chancery  to  a  court 
of  law  and  returned  with  such  findings. 
APPROVED  February  16,  1875. 


PATENT  ACT  OF  1887. 
24  STATUTES  AT  LARGE,  CHAP.  105. 

An  Act  to  amend  the  law  relating  to  patents,  trade-marks 
and  copyright. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
hereafter,  during  the  term  of  letters  patent  for  a  design,  it 
shall  be  unlawful  for  any  person,  other  than  the  owner  of 
said  letters  patent,  without  the  license  of  such  owner,  to 
apply  the  design  secured  by  such  letters  patent,  or  any 
colorable  imitation  thereof,  to  any  article  of  manufacture 
for  the  purpose  of  sale,  or  to  sell  or  expose  for  sale  any 
article  of  manufacture  to  which  such  design  or  colorable 
imitation  shall  without  the  license  of  the  owner,  have  been 
applied,  knowing  that  the  same  has  been  so  applied. 

Any  person  violating  the  provisions,  or  either  of  them,  of 
this  section,  shall  be  liable  in  the  amount  of  two  hundred 
and  fifty  dollars ;  and  in  case  the  total  profit  made  by  him 
from  the  manufacture  or  sale,  as  aforesaid,  of  the  article  or 
articles  to  which  the  design,  or  colorable  imitation  thereof, 
has  been  applied,  exceeds  the  sum  of  two  hundred  and  fifty 
dollars,  he  shall  be  further  liable  for  the  excess  of  such 
profit  over  and  above  the  sum  of  two  hundred  and  fifty 
dollars. 


680  THE   PATENT   STATUTES. 

And  the  full  amount  of  such  liability  may  be  recovered 
by  the  owner  of  the  letters  patent,  to  his  own  use,  in  any 
circuit  court  of  the  United  States,  having  jurisdiction  of  the 
parties,  either  by  action  at  law,  or  upon  a  bill  in  equity  for 
an  injunction  to  restrain  such  infringement. 

SECTION  2.  That  nothing  in  this  act  contained  shall  pre- 
vent, lessen,  impeach,  or  avoid  any  remedy  at  law  or  in 
equity  which  any  owner  of  letters  patent  for  a  design, 
aggrieved  by  the  infringement  of  the  same,  might  have  had 
if  this  act  had  not  been  passed  ;  but  such  owner  shall  not 
twice  recover  the  profit  made  from  the  infringement. 

APPEOVED  February  4,  1887. 


PATENT  ACT  OF  1888. 
25  STATUTES  AT  LARGE,  CHAP.  15. 

An  Act  to  amend  section  four  thousand  eight  hundred  and 
eighty-three  of  the  Ee vised  Statutes,  to  enable  the 
Assistant  Secretary  of  the  Interior  to  sign  patents. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
section  four  thousand  eight  hundred  and  eighty-three  of  the 
Revised  Statutes  is  hereby  amended  by  inserting  after  the 
words  "Secretary  of  the  Interior,"  where  they  occur  therein, 
the  following  words :  "  or  under  his  direction  by  one  of  the 
Assistant  Secretaries  of  the  Interior,"  so  that  the  said  section 
as  amended  will  read  as  follows  : 

"  SECTION  4883.  All  patents  shall  be  issued  in  the  name 
of  the  United  States  of  America,  under  the  seal  of  the  Patent 
Office,  and  shall  be  signed  by  the  Secretary  of  the  Interior, 
or  under  his  direction  by  one  of  the  Assistant  Secretaries 
of  the  Interior,  and  countersigned  by  the  Commissioner  of 
Patents,  and  they  shall  be  recorded,  together  with  the  spe- 
cifications, in  the  Patent  Office,  in  books  to  be  kept  for  that 
purpose." 

APPROVED  February  18,  1888. 


THE   JUDICIARY  ACT   OF   1891.  681 

JUDICIAKY  ACT  OF  1891.* 

26  STATUTES  AT  LARGE,  CHAP.  517. 

As  Amended  February  18,  1895. 

28  STATUTES  AT  LARGE,  CHAP.  96. 

An  Act  to  establish  Circuit  Courts  of  Appeals,  and  to  define 
and  regulate  in  certain  cases  the  jurisdiction  of  the 
Courts  of  the  United  States,  and  for  other  purposes. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  Assembled, 

SECTION  6.  That  the  Circuit  Courts  of  Appeals,  established 
by  this  act,  shall  exercise  appellate  jurisdiction  to  review 
by  appeal  or  by  writ  of  error  final,  Decisions  in  the  District 
Courts  and  the  existing  Circuit  Courts,  unless  otherwise 
provided  by  law,  and  the  judgments  or  decrees  of  the  Cir- 
cuit Courts  of  Appeals  shall  be  final  in  all  cases  arising 
under  the  patent  laws,  excepting  that  in  every  such  subject 
within  its  appellate  jurisdiction,  the  Circuit  Court  of  Ap- 
peals at  any  time  may  certify  to  the  Supreme  Court  of  the 
United  States  any  questions  or  propositions  of  law  concern- 
ing which  it  desires  the  instruction  of  that  court  for  its 
proper  decision.  And  thereupon  the  Supreme  Court  may 
either  give  its  instruction  on  the  questions  and  propositions 
certified  to  it,  which  shall  be  binding  upon  the  Circuit 
Courts  of  Appeals  in  such  case,  or  it  may  require  that  the 
whole  record  and  cause  may  be  sent  up  to  it  for  its  consid- 
eration, and  thereupon  shall  decide  the  whole  matter  in 
controversy  in  the  same  manner  as  if  it  had  been  brought 
there  for  review  by  writ  of  error  or  appeal.  And  excepting 
also  that  in  any  such  case  as  is  hereinbefore  made  final  in 
the  Circuit  Court  of  Appeals,  it  shall  be  competent  for  the 
Supreme  Court  to  require,  by  certiorari  or  otherwise,  any 
such  case  to  be  certified  to  the  Supreme  Court  for  its  review 
and  determination,  with  the  same  power  and  authority  in 
the  case  as  if  it  had  been  carried  by  appeal  or  writ  of  error 
to  the  Supreme  Court. 

-  The  parts  which  are  not  relevant  to  patent  cases  are  omitted. 


682  THE   PATENT   STATUTES. 

SECTION  7.  That  where,  upon  a  hearing  in  equity  in  a 
District  Court  or  a  Circuit  Court,  an  injunction  shall  be 
granted,  continued,  refused,  or  dissolved  by  an  interlocutory 
order  or  decree,  or  an  application  to  dissolve  an  injunction 
shall  be  refused,  in  a  case  in  which  an  appeal  from  a  final 
decree  may  be  taken  under  the  provisions  of  this  Act  to  the 
Circuit  Court  of  Appeals,  an  appeal  may  be  taken  from 
such  interlocutory  order  or  decree,  granting,  continuing, 
refusing,  dissolving  or  refusing  to  dissolve  an  injunction,  to 
the  Circuit  Court  of  Appeals  ;  Provided,  That  the  appeal 
must  be  taken  within  thirty  days  from  the  entry  of  such 
order  or  decree,  and  it  shall  take  precedence  in  the  appel- 
late court ;  and  the  proceedings  in  other  respects  in  the 
court  below  shall  not  be  stayed,  unless  otherwise  ordered 
by  that  court  during  the  pendency  of  such  appeal ;  And 
provided  further  that  the  court  below  may  in  its  discretion 
require  as  a  condition  of  the  appeal,  an  additional  injunc- 
tion bond. 

SECTION  10.  And  whenever  on  appeal  or  writ  of  error  or 
otherwise,  a  case  coming  from  a  Circuit  Court  of  Appeals 
shall  be  reviewed  and  determined  in  the  Supreme  Court, 
the  cause  shall  be  remanded  by  the  Supreme  Court  to  the 
proper  District  or  Circuit  Court,  for  further  proceedings  in 
pursuance  of  such  determination.  Whenever  on  appeal  or 
writ  of  error  or  otherwise  a  case  coming  from  a  District  or 
Circuit  Court  shall  be  reviewed  and  determined  in  the  Cir- 
cuit Court  of  Appeals,  in  a  case  in  which  the  decision  in 
the  Circuit  Court  of  Appeals  is  final,  such  cause  shall  be 
remanded  to  the  said  District  or  Circuit  Court,  for  further 
proceedings  to  be  there  taken  in  pursuance  of  such  deter- 
mination. 

SECTION  11.  That  no  appeal  or  writ  of  error  by  which 
any  order,  judgment,  or  decree  may  be  reviewed  in  the 
Circuit  Courts  of  Appeals  under  the  provisions  of  this 
Act,  shall  be  taken  or  sued  out  except  within  six  months 
after  the  entry  of  the  order,  judgment,  or  decree  sought  to 
be  reviewed.  And  all  provisions  of  law  now  in  force  regulat- 
ing the  methods  and  system  of  review,  through  appeals  or 


THE  JUDICIARY  ACT  OF  1893.  683 

writs  of  error,  shall  regulate  the  methods  and  system  of 
appeals  and  writs  of  error  provided  for  in  this  act  in  respect 
of  the  Circuit  Courts  of  Appeals,  including  all  provisions 
for  bonds  or  other  securities  to  be  required  and  taken  on 
such  appeals  and  writs  of  error,  and  any  judge  of  the  Cir- 
cuit Courts  of  Appeals,  in  respect  of  cases  brought  or  to 
be  brought  to  that  court,  shall  have  the  same  powers  and 
duties  as  to  the  allowance  of  appeals  or  writs  of  error,  and 
the  conditions  of  such  allowance,  as  now  by  law  belong  to 
the  justices  or  judges  in  respect  of  the  existing  courts  of 
the  United  States  respectively. 

SECTION  14.  And  all  acts  and  parts  of  acts  relating  to 
appeals  or  writs  of  error  inconsistent  with  the  provisions 
for  review  by  appeals  or  writs  of  error  in  the  preceding 
sections  five  and  six  of  this  act  are  hereby  repealed. 

SECTION  15.  That  the  Circuit  Court  of  Appeals  in  cases 
in  which  the  judgments  of  the  Circuit  Courts  of  Appeals 
are  made  final  by  this  act  shall  have  the  same  appellate 
jurisdiction,  by  writ  of  error  or  appeal,  to  review  the  judg- 
ments, orders,  and  decrees  of  the  Supreme  Courts  of  the 
several  Territories  as  by  this  act  they  may  have  to  review 
the  judgments,  orders,  and  decrees  of  the  District  Courts 
and  Circuit  Courts  ;  and  for  that  purpose  the  several  Terri- 
tories shall,  by  order  of  the  Supreme  Court,  to  be  made 
from  time  to  ^ime,  be  assigned  to  particular  circuits. 

APPROVED  March  3,  1891. 

JUDICIAKY  ACT   OF   1893.* 
27  STATUTES  AT  LARGE,  CHAP.  74. 

AN  ACT  to  establish  a  Court  of  Appeals  for  the  District  of 

Columbia,  and  for  other  purposes. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
there  shall  be,  and  there  is  hereby,  established  in  the  Dis- 
trict of  Columbia  a  court,  to  be  known  as  the  Court  of 
Appeals  of  the  District  of  Columbia,  which  shall  consist  of 
*  All  parts  not  relevant  to  patent  law,  arc  omitted. 


684  THE   PATENT   STATUTES. 

one  chief  justice  and  two  associate  justices,  who  shall  be 
appointed  by  the  President,  by  and  with  the  advice  and 
consent  of  the  Senate,  and  shall  hold  office  during  good 
behavior. 

SECTION  7.  That  any  party  aggrieved  by  any  final  order, 
judgment,  or  decree  of  the  Supreme  Court  of  the  District 
of  Columbia,  or  of  any  justice  thereof,  may  appeal  there- 
from to  the  Court  of  Appeals  hereby  created ;  and  upon 
such  appeal  the  Court  of  Appeals  shall  review  such 
order,  judgment,  or  decree,  and  affirm,  reverse,  or  modify 
the  same  as  shall  be  just.  Appeals  shall  also  be  allowed 
to  said  Court  of  Appeals  from  all  interlocutory  orders  of 
the  Supreme  Court  of  the  District  of  Columbia,  or  by  any 
justice  thereof,  whereby  the  possession  of  property  is  changed 
or  affected,  such  as  orders  for  the  appointment  of  receivers, 
granting  injunctions,  dissolving  writs  of  attachment,  and 
the  like  ;  and  also  from  any  other  interlocutory  order,  in 
the  discretion  of  said  Court  of  Appeals,  whenever  it  is 
made  to  appear  to  said  court  upon  petition  that  it  will  be 
in  the  interest  of  justice  to  allow  such  appeal. 

SECTION  8.  That  any  final  judgment  or  decree  of  the  said 
Court  of  Appeals  may  be  re-examined  and  affirmed, 
reversed  or  modified  by  the  Supreme  Court  of  the  United 
States,  upon  writ  of  error  or  appeal,  in  cases,  without  regard 
to  the  sum  or  value  of  the  matter  in  dispute,  wherein  is 
involved  the  validity  of  any  patent. 

SECTION  9.  That  the  determination  of  appeals  from  the 
decision  of  the  Commissioner  of  Patents,  now  vested  in  the 
general  term  of  the  Supreme  Court  of  the  District  of 
Columbia,  in  pursuance  of  the  provisions  of  section  seven 
hundred  and  eighty  of  the  Revised  Statutes  of  the  United 
States,  relating  to  the  District  of  Columbia,  shall  hereafter 
be  and  the  same  is  hereby  vested  in  the  Court  of  Appeals 
created  by  this  act ;  and  in  addition,  any  party  aggrieved 
by  a  decision  of  the  Commissioner  of  Patents  in  any  inter- 
ference case  may  appeal  therefrom  to  said  Court  of 
Appeals. 

APPBOVED  February  9,  1893. 


FORMS  OF  PATENT  PLEADINGS. 


DECLAKATION. 
CIECUIT   COUKT  OF  THE  UNITED   STATES, 

FOR  THE  DISTRICT  OF  CONNECTICUT. 

OF  THE  SEPTEMBEE  TERM  OF  THE  YEAR  EIGHTEEN  HUNDRED  AND 

NINETY-FIVE. 

DISTRICT  OF  CONNECTICUT,  s#. 

THOMAS  TRACY,  of  Hartford,  Connecticut,  who  is  a  citizen 
of  the  State  of  Connecticut,  and  of  the  United  States,  plain- 
tiff in  this  suit,  by  John  Jay,  his  attorney,  complains  of  the 
Atherton  Electric  Company,  which  is  a  corporation  created 
and  existing  in  due  form  of  law  in  the  State  of  Connecticut, 
defendant,  of  a  plea  of  trespass  on  the  case. 

For  that,  Samuel  Sinclair,  of  New  Haven,  Connecticut, 
before  and  at  the  time  of  his  application  for  the  hereinafter 
mentioned  letters  patent,  was  a  citizen  of  the  United  States, 
and  was  the  true  original  and  first  inventor  of  a  certain  new 
and  useful  machine,  fully  described  in  the  specification  of 
the  letters  patent  hereinafter  mentioned,  and  named  therein 
an  "  Improved  Dynamo,"  and  which  was  not  known  or  used 
in  this  country,  and  not  patented  or  described  in  any  printed 
publication  in  this  or  in  any  foreign  country,  before  his 
invention  thereof  ;  and  was  not  in  public  use  or  on  sale,  in 
this  country,  more  than  two  years  prior  to  his  application 
for  letters  patent  of  the  United  States  therefor. 

And  for  that,  heretofore,  to  wit :  on  the  first  clay  of  June, 
1878,  and  before  the  issuing  of  the  hereinafter  mentioned 


686  FORMS  OF  PATENT  PLEADINGS. 

letters  patent,  the  said  Samuel  Sinclair,  by  an  instrument 
in  writing  duly  executed  and  delivered  by  him,  and  bearing 
date  on  the  last  named  day,  did  assign  to  Eufus  Eussell,  of 
Meriden,  Connecticut,  all  the  right,  title,  and  interest  what- 
ever in  said  invention ;  and  for  that,  said  instrument  in 
writing  was  duly  recorded  in  the  Patent  Office  on  the  tenth 
day  of  June,  1878. 

And  for  that,  on  the  sixteenth  day  of  July,  1878,  letters 
patent  No.  206,206  for  said  invention,  in  due  form  of  law, 
were,  on  the  application  of  said  Samuel  Sinclair,  issued  and 
delivered  to  said  Eufus  Eussell,  in  the  name  of  the  United 
States  of  America,  and  under  the  seal  of  the  Patent  Office 
of  the  United  States,  and  were  signed  by  the  Secretary  of 
the  Interior  of  the  United  States,  and  countersigned  by  the 
Commissioner  of  Patents ;  and  for  that,  said  letters  patent 
did  grant  to  said  Eufus  Eussell,  his  heirs  or  assigns,  for  the 
term  of  seventeen  years,  the  exclusive  right  to  make,  use, 
and  vend  the  said  invention,  throughout  the  United  States, 
and  the  Territories  thereof ;  and  which  letters  patent  the 
plaintiff  now  brings  here  into  court. 

And  the  plaintiff  says,  that  the  said  Eufus  Eussell,  before 
the  committing  of  the  grievances  hereinafter  mentioned,  to 
wit :  on  the  sixteenth  day  of  September,  1880,  by  a  certain 
instrument  in  writing,  duly  executed  and  delivered  by  him, 
and  bearing  date  on  said  last  mentioned  day,  did  assign  to 
the  said  plaintiff,  the  entire  right,  title,  and  interest  in  and 
to  the  then  unexpired  portion  of  the  term  of  said  letters 
patent,  which  instrument  in  writing  was  recorded  in  the 
Patent  Office  on  the  thirty- first  day  of  October,  1880. 

And  the  plaintiff  further  says,  that  always  hitherto,  from 
the  time  of  the  execution  of  the  said  last  mentioned  instru- 
ment, up  to  the  expiration  of  the  said  letters  patent,  he  was 
the  sole  owner  of  said  letters  patent,  and  is  now  the  sole 
owner  of  all  rights  of  action  which  arose  from  any  infringe- 
ment thereof  during  that  time. 

And  the  plaintiff  further  says,  that  the  said  Eufus  Eus- 
sell, and  the  said  plaintiff,  and  all  persons  who  ever  made 
or  sold  any  specimen  of  said  "  Improved  Dynamo  "  for  or 


DECLARATION.  687 

under  them,  or  either  of  them,  gave  sufficient  notice  to  the 
public  thai  the  same  was  patented,  by  fixing  thereon  the 
word  "  patented  "  together  with  the  day  and  year  the  said 
letters  patent  were  granted. 

Yet  the  defendant,  well  knowing  the  premises,  but  contriv- 
ing to  injure  the  plaintiff,  heretofore,  to  wit :  on  and  after  the 
first  day  of  January,  1881,  and  up  to  and  on  the  sixteenth 
day  of  July,  1895,  and  during  and  within  the  term  of  seven- 
teen years  mentioned  in  said  letters  patent,  and  after  the 
execution  of  the  said  assignment  to  the  plaintiff,  and  before 
the  bringing  of  this  suit,  and  within  the  United  States, 
unlawfully,  wrongfully,  and  injuriously,  and  with  intent  to 
deprive  the  plaintiff  of  the  royalties  which  he  might  and 
otherwise  would  have  derived  from  the  sale  of  licenses  to 
make  and  use  and  sell  specimens  of  said  machine,  and  with- 
out the  license  of  the  plaintiff  or  of  the  said  Rufus  Eussell, 
and  against  the  will  of  the  plaintiff,  did  make,  and  did  use, 
and  did  sell,  and  did  cause  to  be  made,  and  did  cause  to  be 
used,  and  did  cause  to  be  sold,  sundry  specimens  of  said 
machine,  and  of  machines  which  contained  and  employed 
substantially  the  invention  covered  by  said  letters  patent, 
and  particularly  pointed  out  in  the  third  claim  thereof,  in 
infringement  of  the  said  exclusive  rights  secured  to  the  said 
Eufus  Russell  by  the  letters  patent  aforesaid,  and  assigned 
by  him  to  the  said  plaintiff,  as  hereinbefore  set  forth,  and 
contrary  to  the  statutes  of  the  United  States  in  such  cases 
made  and  provided  ;  whereby  the  plaintiff  has  been  and  is 
greatly  injured,  and  has  been  deprived  of  large  royalties 
which  he  might  and  otherwise  would  have  derived  from  the 
sale  of  licenses  to  make  and  use  and  sell  specimens  of  said 
machine,  and  has  sustained  actual  damages  thereby  to  the 
amount  of  ten  thousand  dollars. 

Wherefore,  by  force  of  the  statutes  of  the  United  States, 
a  right  of  action  has  accrued  to  the  said  plaintiff  to  recover 
the  said  actual  damages,  and  such  additional  amount,  not 
exceeding,  in  the  whole,  three  times  the  amount  of  such 
actual  damages,  as  the  court  may  see  fit  to  adjudge  and 
order,  besides  costs. 


688  POEMS  OF  PATENT  PLEADINGS. 

Yet  the  defendant,  though  often  requested  so  to  do,  has 
never  paid  the  same,  nor  any  part  thereof,  but  has  refused, 
and  still  refuses  so  to  do,  and  therefore  the  plaintiff  brings 
his  suit. 

JOHN  JAY, 

Attorney  for  the  Plaintiff. 

PLEA   IN   BAE. 
CIRCUIT  COURT  OF  THE  UNITED  STATES, 

FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TKACY 


THE  ATHEKTON  ELECTEIC  COMPANY. 


Trespass  on  the 
Case. 


And  the  said  defendant,  by  Richard  Ray,  its  attorney, 
comes  and  defends  the  wrong  and  injury  when,  etc.,  and 
says,  that  it  is  not  guilty  of  the  supposed  grievances  above 
laid  to  its  charge,  or  any  or  either  of  them,  or  any  part 
thereof,  in  manner  and  form  as  the  said  plaintiff  has  above 
thereof  complained  against  it.  And  of  this  the  defendant 
puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  machine  covered  by  the  letters  patent  mentioned 
in  the  plaintiff's  declaration,  was  not  an  invention  when 
produced  by  the  said  Samuel  Sinclair.  And  of  this  the 
defendant  puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  said  machine  was  not  novel  when  produced  by  the 
said  Samuel  Sinclair ;  for  that,  a  machine  substantially 
identical  with  it  in  character,  was  previously  patented  in 


PLEA  IN   BAR.  689 

letters  patent  of  the  United  States,  granted  to  Mason  Mont- 
gomery, May  16,  1872 ;  and  for  that,  another  like  machine 
was  previously  described  on  page  777  of  a  certain  printed 
book  entitled  "The  Day  of  the  Dynamo,'  published  in 
London,  England,  in  the  year  1873,  by  William  Wright,  of 
Paternoster  Row ;  and  for  that,  still  another  like  machine 
was  previously  known  and  used  by  Nathan  Norris,  of 
Rochester,  New  York,  in  said  Rochester,  in  the  year  1874. 
And  of  this  the  defendant  puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  said  Samuel  Sinclair  actually  abandoned  his  said  alleged 
invention,  before  said  letters  patent  were  granted.  And 
this  the  defendant  is  ready  to  verify. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  said  alleged  invention  was  in  public  use  in  this  country 
more  than  two  years  before  said  Samuel  Sinclair  made  any 
application  for  letters  patent  thereon.  And  of  this  the 
defendant  puts  itself  upon  the  country. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  invention  covered  by  said  letters  patent  of  July  16, 
1878,  was  previously  patented  in  the  republic  of  France,  to 
said  Samuel  Sinclair,  for  fifteen  years  from  August  1, 
1877,  and  that  the  foreign  patent  thus  granted  expired 
August  1,  1892.  And  this  the  defendant  is  ready  to  verify. 

And  for  a  further  plea  in  this  behalf,  the  defendant  says, 
that  the  plaintiff's  action  is  barred  by  Section  1375  of  the 
General  Statutes  of  Connecticut,  so  far  as  said  action  is 
based  upon  any  alleged  doings  of  the  defendant  prior  to 
August  10, 1889.  And  this  the  defendant  is  ready  to  verify. 

RICHARD  RAY, 
Attorney  for  the  Defendant. 


690  FORMS  OF  PATENT  PLEADINGS. 

REPLICATION. 
CIRCUIT   COURT   OF  THE  UNITED   STATES, 

FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 


v. 


THE  ATHERTGN  ELECTRIC  COMPANY. 


Trespass  on  the 
Case. 


And  the  said  plaintiff,  as  to  the  said  pleas  of  the  said 
defendant  by  it  above  pleaded,  of  which  it  has  put  itself 
upon  the  country,  doth  the  like. 

And  the  plaintiff,  as  to  the  said  plea  of  the  defendant,  by 
it  fourthly  above  pleaded,  says  that  the  said  Samuel  Sin- 
clair did  not  actually  abandon  said  invention  before  said 
letters  patent  were  granted.  And  of  this  the  plaintiff  puts 
himself  upon  the  country. 

And  the  plaintiff,  as  to  the  said  plea  of  the  defendant, 
sixthly  above  pleaded,  says  that  the  invention  covered  by 
said  letters  patent  of  July  16,  1878,  was  not  previously 
patented  in  the  republic  of  France.  And  of  this  the  plain- 
tiff puts  himself  upon  the  country. 

And  the  plaintiff,  as  to  the  said  plea  of  the  defendant, 
seventhly  above  pleaded,  says  that  the  defendant  fraudu- 
lently concealed  from  the  plaintiff,  until  after  August  10, 
1889,  the  existence  of  that  part  which  accrued  prior  to  that 
day,  of  the  cause  of  the  plaintiff's  action.  And  this  the 
plaintiff  is  ready  to  verify. 

JOHN  JAY, 
Attorney  for  the  Plaintiff. 


REJOINDER. 


691 


REJOINDER. 
CIRCUIT  COUET  OF  THE  UNITED  STATES, 

FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 


v. 


THE  ATHERTON  ELECTRIC  COMPANY. 


Trespass  on  the 
Case. 


And  the  said  defendant,  as  to  the  said  replication  of  the 
said  plaintiff,  to  the  said  fourth  and  sixth  pleas  of  the  said 
defendant,  and  of  which  he  hath  put  himself  upon  the 
country,  doth  the  like. 

And  the  said  defendant,  as  to  the  replication  of  the 
plaintiff,  to  the  said  seventh  plea  of  the  defendant,  says 
that  the  defendant  did  not  fraudulently  conceal  from  the 
plaintiff  until  after  August  10, 1889,  or  at  anytime,  the  exist- 
ence of  that  part  which  accrued  prior  to  that  day  of  the 
alleged  cause  of  the  plaintiff's  action.  And  of  this  the 
defendant  puts  itself  upon  the  country. 

EICHARD   BAY, 

Attorney  for  the  Defendant. 


692  FORMS  OF  PATENT  PLEADINGS. 

SUE-EEJOINDEE. 
CIECUIT  COUKT   OF   THE  UNITED   STATES, 

FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 


Trespass  on  the 
THE    ATHERTON    ELECTRIC    COMPANY. 


Case. 


And  the  said  plaintiff,  as  to  the  said  rejoinder  of  the  said 
defendant,  and  whereof  it  hath  put  itself  upon  the  country, 
doth  the  like. 

JOHN  JAY, 
Attorney  for  the  Plaintiff. 

BILL   OF   COMPLAINT. 
CIECUIT  COUET  OF  THE  UNITED   STATES, 

FOR  THE  DISTRICT  OF  CONNECTICUT. 

To  the  Judges  of  the  Circuit  Court  of  the  United  States, 

for  the  District  of  Connecticut. 
IN  EQUITY. 

THOMAS  TRACY,  of  Hartford,  Connecticut,  who  is  a  citizen 
of  the  State  of  Connecticut,  and  of  the  United  States, 
brings  this  his  bill  into  this  court,  against  The  Atherton 
Electric  Company,  which  is  a  corporation  created  and  exist- 
ing in  due  form  of  law  in  the  State  of  Connecticut. 

And  thereupon  your  orator  complains  and  says,  on  inform- 
ation and  belief,  that  Samuel  Sinclair,  of  New  Haven,  Con- 
necticut, before  and  at  the  time  of  his  application  for  the 
hereinafter  mentioned  letters  patent,  was  a  citizen  of  the 
United  States,  and  was  the  true  original  and  first  inventor 
of  a  certain  new  and  useful  machine,  fully  described  in  the 


BILL   OF    COMPLAINT.  693 

specification  of  the  letters  patent  hereinafter  mentioned, 
and  named  therein  an  "  Improved  Dynamo,"  and  which 
was  not  known  or  used  in  this  country,  and  not  patented 
or  described  in  any  printed  publication  in  this  or  in  any 
foreign  country,  before  his  invention  thereof ;  and  was  not 
in  public  use  or  on  sale,  in  this  country,  more  than  two  years 
prior  to  his  application  for  letters  patent  of  the  United 
States  therefor. 

And  your  orator  further  shows  unto  your  Honors,  on  infor- 
mation and  belief,  that  on  the  first  day  of  June,  1888,  and 
before  the  issuing  of  the  hereinafter  mentioned  letters 
patent,  the  said  Samuel  Sinclair,  by  an  instrument  in  writ- 
ing duly  executed  and  delivered  by  him,  and  bearing  date 
on  the  last  named  day,  did  assign  to  Bufus  Russell,  of  Mer- 
iden,  Connecticut,  all  the  right,  title  and  interest  whatever 
in  said  invention  ;  and  that  said  instrument  in  writing  was 
duly  recorded  in  the  Patent  Office  on  the  tenth  day  of 
June,  1888. 

And  your  orator  further  shows,  on  information  and  belief, 
that  on  the  sixteenth  day  of  July,  1888,  letters  patent  No. 
386,386,  for  said  invention,  in  due  form  of  law,  were  on  the 
application  of  said  Samuel  Sinclair,  issued  and  delivered 
to  said  Bufus  Bussell,  in  the  name  of  the  United  States  of 
America,  and  under  the  seal  of  the  Patent  Office  of  the 
United  States,  and  were  signed  by  the  Secretary  of  the 
Interior  of  the  United  States,  and  countersigned  by  the 
Commissioner  of  Patents ;  and  that  the  said  letters  patent 
did  grant  to  the  said  Bufus  Bussell,  his  heirs  or  assigns,  for 
the  term  of  seventeen  years,  the  exclusive  right  to  make, 
use  and  vend  the  said  invention  throughout  the  United 
States  and  the  Territories  thereof  ;  and  which  letters  patent 
the  complainant  now  brings  here  into  court. 

And  your  orator  further  shows,  that  the  said  Bufus  Bus- 
sell,  on  the  sixteenth  day  of  September,  1888,  by  a  certain 
instrument  in  writing,  duly  executed  and  delivered  by  him, 
and  bearing  date  on  said  last  mentioned  day,  did  assign  to 
your  orator  the  entire  right,  title,  and  interest,  in  and  to  the 
then  unexpired  portion  of  the  term  of  said  letters  patent ; 


694  FOKMS  OF  PATENT  PLEADINGS. 

and  that  said  instrument  in  writing  was  recorded  in  the 
Patent  Office  on  the  thirty-first  day  of  October,  1888. 

And  your  orator  further  shows,  that  always  hitherto,  from 
the  time  of  the  execution  of  the  said  last  mentioned  instru- 
ment, up  to  the  beginning  of  this  action,  he  was,  and  that 
he  now  is,  the  sole  owner  of  said  letters  patent,  and  is  now 
the  sole  owner  of  all  rights  of  action  which  arose  from  any 
infringement  thereof,  since  the  execution  of  the  said  last 
mentioned  instrument. 

And  your  orator  further  shows,  on  information  and 
belief,  that  the  said  Rufus  Russell  and  your  orator,  and  all 
persons  who  ever  made  or  sold  any  specimen  of  said 
"  Improved  Dynamo "  for  or  under  them,  or  either  of 
them,  gave  sufficient  notice  to  the  public  that  the  same 
was  patented,  by  fixing  thereon  the  word  "  patented," 
together  with  the  day  and  year  said  letters  patent  were 
granted. 

And  your  orator  further  shows,  on  information  and 
belief,  that  the  said  defendant,  on  and  after  the  first  day  of 
January,  1889,  and  up  to  the  time  of  the  commencement  of 
this  action,  and  during  and  within  the  term  of  seventeen 
years  mentioned  in  said  letters  patent,  and  after  the  execu- 
tion of  the  said  assignment  to  your  orator,  and  before  the 
commencement  of  this  action,  and  within  the  United  States, 
unlawfully,  wrongfully,  and  injuriously,  with  intent  to 
derive  profits  from  making  and  using  and  selling  specimens 
of  said  machine,  and'  to  deprive  your  orator  of  the  royalties 
which  he  might  and  otherwise  would  have  derived  from  the 
sale  of  licenses  to  make,  and  use  and  sell  specimens  thereof, 
and  without  the  license  of  your  orator,  or  of  the  said  Rufus 
Russell,  and  against  the  will  of  your  orator,  did  make  and 
did  use,  and  did  sell,  and  did  cause  to  be  made,  and  did 
cause  to  be  used,  and  did  cause  to  be  sold,  sundry  speci- 
mens of  said  machine,  and  of  machines  which  contained 
and  employed  substantially  the  invention,  covered  by  said 
letters  patent,  and  particularly  pointed  out  in  the  third 
claim  thereof,  in  infringement  of  the  said  exclusive  rights 
secured  to  the  said  Rufus  Russell  by  the  letters  patent 
aforesaid,  and  assigned  by  him  to  your  orator  as  here- 


BILL   OF  COMPLAINT.  695 

inbefore  set  forth ;  but  how  many  such  specimens  the 
defendant  so  made,  and  used,  and  sold,  or  caused  to  be 
made,  and  used,  and  sold,  respectively,  your  orator  is  igno- 
rant, and  cannot  set  forth  ;  but  your  orator  avers,  on  infor- 
mation and  belief,  that  the  defendant  so  made,  and  used, 
and  sold,  and  caused  to  be  made,  and  used,  and  sold,  a 
large  number  thereof,  and  that  it  derived  large  profits 
therefrom,  but  to  what  amount  your  orator  is  ignorant  and 
cannot  set  forth,  and  that  your  orator  has  been  deprived 
of  large  royalties  by  reason  of  the  aforesaid  infringement 
of  the  defendant,  and  has  thus  incurred  large  damages 
thereby. 

And  your  orator  further  shows,  that  he  fears,  and  has 
reason  to  fear,  that  unless  the  defendant  is  restrained  by 
a  writ  of  injunction,  issuing  out  of  this  court,  it  will  con- 
tinue to  make,  and  to  use,  and  to  sell,  numbers  of  speci- 
mens of  said  machine,  and  thereby  will  cause  irreparable 
injury  to  your  orator's  aforesaid  exclusive  rights. 

And  your  orator  further  shows,  on  information  and  belief, 
that  the  validity  of  the  said  letters  patent,  has  heretofore 
been  uniformly  affirmed,  after  strenuous  litigation,  by  ver- 
dicts and  judgments  at  law,  and  by  final  decrees  in  equity, 
in  several  of  the  Circuit  Courts  of  the  United  States  ;  and 
that  the  electric  companies  of  the  United  States  have  long 
generally  acquiesced  in  that  validity. 

And  your  orator  prays  your  Honors  to  grant  unto  your 
orator  a  preliminary,  and  also  a  permanent  writ  of  injunc- 
tion, issuing  out  of  and  under  the  seal  of  this  honorable 
Court,  directed  to  the  said  The  Athprton  Electric  Company, 
and  strictly  enjoining  it  and  its  officers,  agents,  and  em- 
ployees, not  to  make,  or  use,  or  sell,  nor  cause  to  be  made, 
or  used,  or  sold,  any  machine  or  apparatus  containing  or 
employing  the  'invention  covered  and  secured  by  said 
letters  patent,  and  particularly  pointed  out  in  the  third 
claim  thereof. 

And  your  orator  further  prays,  that  the  defendant,  by  a 
decree  of  this  Court,  may  be  compelled  to  account  for,  and 
pay  over  to  your  orator,  all  the  profits  which  the  defendant 


696  FORMS  OF  PATENT  PLEADINGS. 

has  derived,  or  shall  have  derived ,  from  any  making  and  using, 
or  from  any  making  and  selling,  or  from  any  using,  of  any 
specimen  of  the  machine  covered  and  secured  by  said  letters 
patent,  and  particularly  pointed  out  in  the  third  claim 
thereof ;  and  also  that  the  defendant  be  decreed  to  pay  all 
the  damages  which  your  orator  has  incurred,  or  shall  have 
incurred,  on  account  of  the  defendant's  infringement  of  said 
letters  patent ;  and  that  the  defendant  be  decreed  to  also 
pay  the  costs  of  this  suit ;  and  that  your  orator  may  have 
such  further  and  other  relief,  as  the  equity  of  the  case,  or 
the  statutes  of  the  United  States,  may  require,  and  to  this 
Court  may  seem  just. 

To  the  end,  therefore,  that  the  defendant  may,  if  it  can, 
show  why  your  orator  should  not  have  the  relief  hereby 
prayed,  and  may  (but  not  under  oath,  any  oath  being  hereby 
expressly  waived)  full,  true,  direct,  and  perfect  answer  make 
to  such  of  the  several  interrogatories  hereinafter  numbered 
and  set  forth,  as  by  the  note  hereinunder  written,  it  is 
required  to  answer ;  that  is  to  say  : 

1.  Whether,  after  the  first  day  of  January,  1889,  it  made 
or  used,  or  sold,  or  caused  to  be  made  or  used  or  sold,  any- 
where in  the  United  States,  any  specimen  of  any  machine 
or  apparatus  which  contained  or  employed  the  invention 
covered  and  secured  by  said  letters  patent,  and  particularly 
pointed  out  in  the  third  claim  thereof  ;  and  if  so,  how  many 
such  specimens  it  so  made,  and  how  many  it  so  sold,  and  how 
many  it  so  used,  and  how  long  it  used  the  same. 

May  it  please  your  Honors  to  grant  unto  your  orator  a 
writ  of  subpCBna  ad  respondendum,  issuing  out  of  and  under 
the  seal  of  this  Honorable  Court,  and  directed  to  the  said 
The  Atherton  Electric  Company,  and  commanding  it  to 
appear  and  make  answer  to  this  bill  of  complaint,  and  to 
perform  and  abide  by  such  order  and  decree  herein,  as  to 
this  Court  shall  seem  just. 

And  your  orator  will  ever  pray.     THOMAS  TEAC¥J 

Complainant. 
LUTHER  LEARNED,  JOHN  JAY, 

Of  Counsel.          Solicitor  for  the  Complainant. 


PLEA   IN  EQUITY.  697 

The  defendant,  The  Atherton  Electric  Company,  is 
required  to  answer  the  interrogatory  numbered  1. 

JOHN  JAY, 
Solicitor  for  the  Complainant. 

STATE  OF  CONNECTICUT,  COUNTY  OF  HARTFORD,  ss. 

On  this  tenth  day  of  August,  1895,  before  me  per- 
sonally appeared  Thomas  Tracy,  and  made  oath  that  he  has 
read  the  foregoing  bill,  subscribed  by  him,  and  knows  the 
contents  thereof,  and  that  the  same  is  true  of  his  own 
knowledge,  except  as  to  matters  which  are  therein  stated  to 
be  based  on  information  and  belief,  and  that  as  to  those 
matters  he  believes  it  to  be  true. 

i  |  ARTHUR  ANSON, 

Notary  Public. 


PLEA  IN  EQUITY. 
CIKCUIT  COUET  OF  THE  UNITED  STATES, 

FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 


v. 


THE  ATHERTON  ELECTRIC  COMPANY. 


In  Equity. 


The  plea  of  The  Atherton  Electric  Company,  defendant, 
to  the  bill  of  complaint  of  Thomas  Tracy,  complainant. 

This  defendant,  by  protestation,  not  confessing  or 
acknowledging  the  matters  and  things  in  and  by  said  bill 
set  forth  and  alleged  to  be  true,  in  such  manner  and  form 


698  FORMS  OF  PATENT  PLEADINGS. 

as  the  same  are  thereby  and  therein  set  forth  and  alleged  ; 
for  plea  to  the  whole  of  said  bill,  says  that,  prior  to  January 
1, 1889,  the  Gray  Electric  Company,  and  the  Franklin  Elec- 
tric Company,  were  separate  corporations,  created  and  exist- 
ing in  due  form  of  law  in  the  State  of  Connecticut ;  and  that 
each  had  theretofore,  on  August  1,  1888,  purchased,  and 
then  possessed,  a  license  in  writing  executed  by  said  Rufus 
Russell,  authorizing  the  licensee  to  make,  use  and  sell  any 
convenient  number  of  specimens  of  said  machine  through- 
out the  term  of  said  letters  patent ;  and  that  on  or  about 
the  said  January  1,  1889,  the  said  Gray  Electric  Company 
and  the  said  Franklin  Electric  Company,  were  lawfully  con- 
solidated into  one  corporation,  to  wit :  this  defendant. 

All  which  statements  this  defendant  doth  aver  to  be  true, 
and  it  pleads  the  said  licenses  to  the  said  complainant's 
bill,  and  prays  the  judgment  of  this  Honorable  Court, 
whether  it  should  be  compelled  to  make  any  other  or  fur- 
ther answer  to  the  said  bill,  and  prays  to  be  hence  dismissed 
with  its  costs  in  this  behalf  sustained. 

In  witness  whereof,  the  said  defendant,  The  Atherton 
Electric  Company,  has  hereunto  affixed  its  corporate  seal, 
and  caused  the  same  to  be  attested  by  Charles  Clark,  its 
secretary. 

CHARLES  CLARK, 

Secretary. 
RICHARD  RAY, 
Solid-tor  and  Counsel  for  the  Defendant. 

I  hereby  certify  that  in  my  opinion  the  foregoing  plea  is 
well  founded  in  point  of  law. 

RICHARD  RAY, 
Solicitor  and  Counsel  for  the  Defendant. 


STATE  OF  CONNECTICUT,  COUNTY  OF  HARTFORD,  ss. 

On  this  seventh  day  of  October,  1895,  before  me  person- 
ally appeared  Charles  Clark,  and  made  oath  that  he  has 


ANSWER.  699 

read  the  above  plea,  and  knows  the  contents  thereof,  and 
that  it  is  not  interposed  for  delay,  and  that  it  is  true  in 
point  of  fact. 

ARTHUR  ANSON, 

Notary  Public. 


ANSWER. 
CIRCUIT  COURT  OF  THE  UNITED  STATES, 

FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TRACY 


v. 


THE  ATHERTON  ELECTRIC  COMPANY. 


In  Equity. 


The  defendant,  for  answer  to  the  bill  of  complaint  of  the 
complainant,  answering,  says : 

The  defendant  admits,  that  it  is  a  corporation  created  and 
existing  in  due  form  of  law  in  the  State  of  Connecticut. 

The  defendant  denies,  on  information  and  belief,  that 
Samuel  Sinclair  was  the  true,  original,  and  first  inventor  of 
the  machine  covered  by  the  alleged  letters  patent  mentioned 
in  said  bill ;  and  the  defendant  says,  on  information  and 
belief,  that  said  apparatus  was  not  an  invention  when  pro- 
duced by  said  Samuel  Sinclair ;  and  that  it  was  not  novel  at 
that  time,  and  th#t  an  apparatus  substantially  identical  with 
it  in  character  was  previously  patented  in  letters  patent  of 
the  United  States,  granted  to  Mason  Montgomery,  May  16, 
1872 ;  and  that  another  like  apparatus  was  previously 
described  on  page  777  of  a  certain  printed  book  entitled 
"The  Day  of  the  Dynamo,"  published  in  London,  England, 


700  FOKMS  OF  PATENT  PLEADINGS. 

in  the  year  1873,  by  William  Wright,  of  Paternoster  Bow ; 
and  that  still  another  like  machine  was  previously  known 
and  used  by  Nathan  Norris,  of  Eochester,  New  York,  in 
said  Rochester,  in  the  ye%ar  1874 

And  the  defendant  further  says,  on  information  and  belief, 
that  said  Samuel  Sinclair  actually  abandoned  his  said  alleged 
invention,  before  said  letters  patent  were  granted. 

And  the  defendant  further  says,  on  information  and  belief, 
that  the  said  alleged  invention  was  in  public  use,  in  this 
country,  more  than  two  years  before  said  Samuel  Sinclair 
made  any  application  for  letters  patent  thereon. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether  the  said  Samuel  Sinclair  ever  executed  and  deliv- 
ered any  instrument  of  assignment  to  Rufus  Russell,  pur- 
porting to  convey  the  entire  right,  title,  and  interest  in  said 
alleged  invention. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether  the  alleged  letters  patent  for  said  alleged  inven- 
tion, were  ever  issued  and  delivered  to  said  Rufus  Russell. 

And  the  defendant  further  says,  that  it  has  no  knowledge 
whether  the  said  Rufus  Russell  ever  executed  and  delivered 
any  instrument  of  assignment  to  the  complainant,  purport- 
ing to  convey  the  entire  right,  title,  and  interest  in  and  to 
the  then  unexpired  portion  of  the  term  of  said  alleged  letters 
patent. 

And  the  defendant  further  says,  on  information  and  belief, 
that  the  invention  covered  by  said  letters  patent  of  July  16, 
1888,  and  particularly  pointed  out  in  the  third  claim  thereof, 
was  previously  patented  in  the  republic  of  France  to  said 
Samuel  Sinclair,  for  fifteen  years  from  August  1,  1884, 
and  that  the  foreign  patent  thus  granted  will  expire  August 
1,  1899. 

And  the  defendant  further  says,  that  the  plaintiff's  action 
is  barred  by  Section  1375  of  the  General  Statutes  of  Con- 
necticut, so  far  as  said  action  is  based  upon  any  alleged 
doings  of  the  defendant  prior  to  August  10,  1889. 

And  the  defendant  denies,  on  information  and  belief,  that 
it  ever  made,  or  used,  or  sold,  or  caused  to  be  made,  or 


ANSWER.  701 

used,  or  sold,  any  machine  which  contained  or  employed 
any  invention  covered  by  said  letters  patent ;  and  likewise 
denies  that  it  ever  derived  any  profit  from  any  such  making, 
or  using,  or  selling ;  and  likewise  denies  that  the  complain- 
ant ever  incurred  any  damage  on  account  of  any  such 
transaction,  committed  or  caused  to  be  committed  by  the 
defendant. 

The  defendant  further  '  says,  that  it  has  no  knowledge 
whether  the  validity  of  any  such  alleged  letters  patent  has 
heretofore  been  uniformly  affirmed,  after  strenuous  litiga- 
tion, by  verdicts  or  judgments  at  law,  or  by  final  decrees  in 
equity,  in  several  of  the  Circuit  Courts  of  the  United  States  ; 
but  the  defendant  denies,  on  information  and  belief,  that 
any  such  validity  has  been  generally  acquiesced  in  by  the 
electric  companies  of  the  United  States. 

All  of  which  statements  and  defences  this  defendant  is 
ready  to  aver,  maintain,  and  prove,  as  this  Honorable  Court 
shall  direct ;  and  it  prays  hence  to  be  dismissed  with  its 
costs  in  this  behalf  sustained. 

In  witness  whereof,  the  said  defendant,  The  Atherton 
Electric  Company,  has  hereunto  affixed  its  corporate  seal, 
and  caused  the  same  to  be  attested  by  Charles  Clark,  its 
Secretary. 

,^.A — v 

(         )  CHARLES  CLARK, 

4  i»  s.  f 

(          )  Secretary. 

EICHARD  KAY, 
Solicitor  and  Counsel  for  the  Defendant. 


STATE  OF  CONNECTICUT,  COUNTY  OF  HARTFORD,  ss. 

On  the  fourth  day  of  November,  1895,  before  me  personally 
appeard  Charles  Clark,  and  made  oath  that  he  has  read  the 
foregoing  answer,  and  knows  the  contents  thereof ;  and  that 
the  same  is  true  of  his  own  knowledge,  except  as  to  the 
matters  which  are  therein  admitted,  or  stated  to  be  based  on 


702  FOBMS  OF  PATENT  PLEADINGS. 

information  and  belief,  and  as  to  those  matters  he  believes 
it  to  be  true. 

5  .  AETHUE  ANSON, 

"\       I..    D.       r 

(^^ /  Notary  Public. 

REPLICATION  IN  EQUITY. 
CIRCUIT  COURT   OF  THE    UNITED   STATES, 

FOR  THE  DISTRICT  OF  CONNECTICUT. 


THOMAS  TEACY 

v. 

In  Equity. 

THE  ATHEETON  ELECTEIC 
COMPANY. 


This  repliant,  saving  and  reserving  unto  himself  all  and 
all  manner  of  advantage  of  exception  to  the  manifold  insuffi- 
ciencies of  the  said  answer,  for  replication  thereunto  saith, 
that  he  will  aver  and  prove  his  said  bill  to  be  true,  certain, 
and  sufficient  in  the  law  to  be  answered  unto  ;  and  that  the 
said  answer  of  the  said  defendant  is  uncertain,  untrue,  and' 
insufficient  to  be  replied  unto  by  this  repliant ;  without  this, 
that  any  other  matter  or  thing  whatsoever  in  the  said 
answer  contained,  material  or  effectual  in  the  law  to  be 
replied  unto,  confessed  and  avoided,  traversed  or  denied,  is 
true  ;  all  which  matters  and  things  this  repliant  is,  and  will 
be,  ready  to  aver  and  prove,  as  this  Honorable  Court  shall 
direct ;  and  humbly  prays,  as  in  and  by  his  said  bill  he  hath 
already  prayed. 

JOHN  JAY, 
/Solicitor  for  the  Complainant. 


INDEX. 


TBV  REFERENCES  ARE  TO  THE  SECTIONS. 


ABANDONMENT, 

actual,  of  applications,  145. 

actual,  of  invention,  87-92. 

actual,  of  invention,  by  acquiescence  in  rejection  of  application,  92. 

actual,  of  invention,  by  disclaimer,  90 

actual,  of  invention,  by  express  declaration,  89. 

actual,  of  invention,  by  laches,  91. 

constructive,  of  applications,  146. 

constructive,  of  application,  working  constructive  abandonment  of 

invention,  103,  147. 
constructive,  of  invention,  87,  93,  147. 
constructive,  of  invention,  after  application,  103. 
constructive,  of  invention,  must  be  negatived  in  declarations  and  bills, 

425,  579. 

constructive,  of  invention,  not  condoned  by  excuses,  104. 
evidence  of  actual,  512. 
evidence  of  constructive,  513. 
how  pleaded  in  actions  at  law,  449. 
how  pleaded  in  actions  in  equity,  602. 
of  experiments,  86. 
of  invention,  86. 

of  invention,  after  issue  of  letters  patent,  106,  107. . 
of  patents,  106,  107. 
several  kinds  of,  86. 

ACCIDENT 

causing  reissuable  faults,  220. 
necessitating  disclaimers,  193,  194. 

ACCOUNT 

of  profits,  covering  what  time,  714. 

ACCOUNTINGS 

before  masters.  739-743. 


704  INDEX. 

ACQUIESCENCE 

in  rejection  of  applications,  92. 

necessary  length  of,  as  foundation  of  right  to  preliminary  injunc- 
tions, 668,  669. 

need  not  be  universal,  in  order  to  constitute  foundation  of  right  to 
preliminary  injunctions,  670. 

public,  as  foundation  of  right  to  preliminary  injunctions,  665,  667. 

working  license,  312. 

ACTIONS 

for  infringement,  form  of,  421. 

for  infringement,  where  brought,  389,  390. 

for  infringement  not  affected  by  subsequent  disclaimers,  193. 

on  assigned  rights  of  action,  395,  435,  579. 

to  enforce  contracts  relevant  to  patents,  388. 

to  set  aside  contracts  relevant  to  patents,  388. 

ACTIONS  AT  LAW, 

declarations  in,  422-438. 

defendants  in,  401-416. 

for  assigned  rights  of  action,  395,  435. 

for  infringements  of  patents,  418. 

plaintiffs  in,  394-400. 

pleas  in,  439-477. 

practice  in,  489. 

testimony  in,  535. 

trial  of,  487. 

ACTIONS  IN  EQUITY, 

answers  in,  598-622. 
bills  in,  576-584. 
complainants  in,  394-400,  574. 
defendants  in,  401-416,  575. 
depositions  in,  638,  639. 
for  assigned  rights  of  actions,  395. 
hearings  in,  632. 

.  hearings  in,  before  masters,  643. 
pleas  in,  589,  590. 
rehearings  in,  645-648. 
replications  in,  623. 
trials  by  jury  in,  642. 

ADDITION 

to  composition  of  matter,  as  affecting  infringement,  369. 
to  mechanical  patent,  as  affecting  infringement,  347. 
to  process  patent,  as  affecting  infringement,  338. 

AFFIDAVITS 

on  motions  for  new  trials,  539. 

on  motions  for  preliminary  injunctions,  662. 


INDEX.  705 

AFFIDAVITS — Continued. 

on  motions  to  dissolve  preliminary  injunctions,  694. 
on  petitions  for  leave  to  file  bills  of  review,  652. 
on  petitions  for  rehearings,  647. 

AFFIKMATION 

made  instead  of  oath,  124. 

AGENTS 

as  defendants  in  actions  for  infringement,  403. 

AGGREGATION 

distinguished  from  combination,  32. 

AMENDMENTS 

of  applications  for  patents,  135-139. 

of  bills  in  equity,  586,  587. 

of  declarations  at  law.  483. 

of  drawings  and  models,  138,  214. 

ANSWERS 

to  bills  of  complaint,  588,  598-622. 

to  bills  in  the  nature  of  supplemental  bills,  631. 

to  bills  of  review,  652. 

to  bills  in  the  nature  of  bills  of  review,  653. 

to  supplemental  bills,  631. 

to  supplemental  bills  in  the  nature  of  bills  of  review,  648. 

when  used  as  affidavits,  662. 

ANTIQUITY  OF  PARTS 

never  negatives  novelty  of  combinations,  66. 

APPEALS 

from  examiners  to  board  of  examiners-in-chief,  132. 

from  board  of  examiners-in-chief  to  Commissioner  of  Patents,  132. 

from  Commissioner  to  Court  of  Appeals  of  District  of  Columbia, 

132,  133,  134. 
from  Court  of  Appeals  of  District  of  Columbia  to  Supreme  Court 

of  the  United  States,  144,  654. 
from   Circuit  Courts  of  the  United   States  to  Circuit  Courts  of 

Appeals,  144,  644rt,  654.  655,  691,  696a,  703. 
from   Supreme  Court  of  the  District  of  Columbia  to  Court  of 

Appeals  of  the  District  of  Columbia,  144,  654. 

APPLICATIONS 

actual  abandonment  of,  145. 
amendments  of  135-139. 
Commissioner's  decisions  upon,  148. 


706  INDEX.       ; 

APPLICATIONS — Continued. 

constructive  abandonment  of,  146. 

dates  of,  129. 

elements  of,  109. 

examination  of,  130. 

fees  due  upon  filing,  125. 

for  letters  patent,  109. 

for  Patent  Office  extensions,  261,  266. 

for  reissues,  212-214,  250. 

how  stated  in  declarations  and  bills,  427,  579. 

may  fix  dates  of  inventions,  59,  69. 

more  than  two  years  after  sale  or  public  use,  93. 

more  than  two  years  after  making,  99. 

never  negative  novelty,  58,  60. 

of  executors  or  administrators,  123. 

papers  forming,  when  evidence,  187. 

re-examination  of,  131. 

rejection  of,  131. 

AKT 

patent-law,  meaning  of  the  word.  3. 

ASSIGNEES 

as  complainants  or  plaintiffs,  394-397. 
may  make  disclaimers,  193. 
may  receive  letters  patent,  110,  171. 
may  receive  reissues,  212,  250,  252. 

ASSIGNMENTS 

authenticated,  how,  275. 

conflicting,  281. 

construction  of,  278. 

descriptions  in,  275. 

how  proved,  495. 

notice  of,  281. 

of  extensions,  280. 

of  inventions,  97,  273. 

of  licenses,  310. 

of  patents,  274. 

of  patents  under  creditors'  bills,  156. 

of  rights  of  action  for  past  infringements,  277,  281. 

pendente.  lite,  699. 

recording  of,  281. 

reformation  of,  278,  279. 

AHSUMPSIT 

actions  of,  418-420. 

ATTACHMENTS  FOR  CONTEMPT 

when  issued,  and  against  whom,  708. 


INDEX.  707 

BAKER,  JUDGE 

opinion  on  aggregation,  32. 

BALDWIN,  JUSTICE 

opinion  on  rights  of  persons  to  use  a  patented  process,  who  used  it 
with  the  consent  of  the  inventor  before  the  patent,  159. 

BANKRUPTCY 

conveying  title  to  patent  rights,  290. 

BEAUTY 

has  a  utility  of  its  own,  22,  80. 

BENEDICT,  JUDGE 

opinion  on  a  question  of  utility,  78. 

BILLS  IN  EQUITY 

amendments  of,  586,  587. 

answers  to,  588. 

defences  to,  591. 

for  preliminary  injunctions,  660. 

interrogating  part  of,  581. 

introductory  part  of,  578. 

oaths  to,  584. 

original,  576. 

pleas  to,  589,  590. 

prayer  for  process  in,  582. 

prayer  for  relief  in,  580. 

signature  of  counsel  to,  583. 

stating  part  of,  579. 

to  compel  issue  of  letters  patent,  134,  144. 

to  perpetuate  testimony,  585. 

to  restrain  publications  of  statements  about  patent  (•ontrovorsies.SSS. 

when  may  be  composite,  629. 

when  may  be  used  as  affidavits.  662. 

BILLS  IN  THE  NATURE  OF  BILLS  OF  REVIEW 
by  whom  filed,  653. 

distinguished  from  bills  of  review,  653. 
required,  when,  653. 

BILLS  IN  THE  NATURE  OF  BILLS  OF  REVIVOR 
by  whom  filed,  628. 
required,  when,  628. 
subordinate  to  original  bills,  624. 

BILLS  IN  THE  NATURE  OF  SUPPLEMENTAL  BILLS 
leave  of  court  necessary  to  filing,  630. 
required,  when,  626. 
subordinate  to  original  bills,  624. 


708  INDEX. 

BILLS  OF  REVIEW 

by  whom  filed,  653. 

filed  subsequent  to  appeal,  652. 

sorts  of,  650. 

to  correct  errors  apparent  on  the  record  or  pleadings,  651. 

to  introduce  newly  discovered  evidence,  652. 

when  proper,  650. 

BILLS  OF  REVIVOK 

by  whom  filed,  628. 
proceedings  upon,  627. 
subordinate  to  original  bills,  624. 
when  required,  627. 

BILLS  OF  REVIVOR  AND  SUPPLEMENT 
when  required,  629. 

BILLS  OF  EXCEPTIONS 

nature  and  function  of,  551,  552. 

what  must  contain,  and  what  exclude,  551,  552. 

when  to  be  prepared  and  signed,  554. 

where  cases  are  tried  by  judge  without  jury,  540. 

BLATOHFOKD,  JUSTICE 

opinion  on  decrees,  where  a  disclaimer  is  found  necessary,  209. 

opinion  on  disclaimers,  199. 

opinion  on  injunctions  in  interference  actions,  319. 

opinion  on  invention,  37. 

opinion  on  respective  rights  of  patentees  and  others,  160. 

BLODGETT,  JUDGE 

opinion  on  invention,  35. 

BOND,  JUDGE 

opinion  on  invention,  34. 

BONDS 

required  from  complainants  on  issuing  preliminary  injunctions.  688, 
696. 

required  from  defendants  in  place  of  preliminary  injunctions,  685- 
687. 

required  from  defendants,  where  permanent  injunctions  are  post- 
poned till  final  decrees,  702. 

required  from  defendants,  where  permanent  injunctions  are  sus- 
pended pending  appeals,  703. 

BRADLEY,  JUSTICE 

dissenting  opinion  in  Kartell  ®.  Tilghman,  388. 
opinion  on  description  in  specification,  174. 
opinion  on  indistinct  claims,  455. 
opinion  on  invention,  25,  26. 


INDEX.  709 

BROADENED  REISSUES 

when  too  late  to  apply  for,  226,  227. 

BROWN,  JUSTICE 

opinion  on  invention,  24. 

BURDEN  OF  PROOF 

on  questions  of  abandonment,  108. 

on  questions  of  delay  in  applying  for  reissues,  523. 

on  questions  of  infringement,  532. 

on  questions  of  intention  in  qui  tarn  cases,  327. 

on  questions  of  invention,  42. 

on  questions  of  novelty,  76. 

on  questions  of  profits,  719. 

on  questions  of  utility,  85. 

CADWALLADER,  JUDGE 

opinion  on  decree,  where  a  disclaimer  is  found  necessary,  209. 

CAMPBELL,  JUSTICE 

opinion  on  attempts  to  disguise  legal  liability,  414. 

CAUSES  OF  ACTION 

when  plurality  of  are  suable  in  one  action,  417. 

CAVEATS 

their  nature  and  functions,  143. 

CAVEAT  EMPTOR 

application  of  the  maxim,  286. 

CERTIFICATE  OF  DIVISION  OF  OPINION 
function  and  operation  of,  657. 

CIRCUIT  COURTS  OF  THE  UNITED  STATES 

jurisdiction  of,  134,  323.  331,  379,  38H,  390,  393,  658. 
titles  of,  422.  577. 

CIRCUIT  COURTS  OF  APPEALS 

appeals  to,  from  final  decrees,  654. 
appeals  to,  from  interlocutory  decrees,  644a. 
appeals  to,  from  preliminary  injunctions,  696a. 
certificates  from,  to  Supreme  Court,  550,  654. 
writs  of  certiorari  to,  from  Supreme  Court,  550,  654. 
writs  of  error  from,  to  Circuit  Courts,  550. 

CITIES 

as  defendants  in  infringement  suits,  401. 

CITIZENSHIP 

stated  in  declarations  and  bills.  422,  428.  426,  579. 


710  INDEX. 

CLAIMS 

co-extensive,  180a. 

compound,  in  respect  of  disclaimers,  199. 
construed  in  the  light  of  the  state  of  the  art,  184. 
defective,  218. 
excessive,  216. 
for  combinations,  198. 
for  single  devices,  in  reissues,  246. 
function  of,  176. 
;  functional  in  form,  183 

how  tested  for  co-extensiveness,  180a. 

how  written,  116. 

indistinct,  177. 

indistinctness  of,  how  affecting  letters  patent,  178. 

indistinctness  of,  how  pleaded  in  actions  at  law,  455. 

indistinctness  of,  how  pleaded  in  actions  in  equity,  608. 

indistinctness  of,  how  proved,  520. 

in  specifications  of  compositions  of  matter,  119. 

in  specifications  of  designs,  120a. 

in  specifications  of  machines,  117. 

in  specifications  of  manufactures,  118. 

in  specifications  of  processes,  120. 

insufficient,  218. 

on  separate  parts  of  machines,  117a. 

reference  letters  or  numerals  in,  117a.  182a. 

use  of  word  "  means"  or  "  mechanism  "  in,  117a. 

valid  and  void,  in  same  letters  pateut  or  reissue,  177,  249. 

validity  of,  governs  validity  of  letters  patent,  177. 

CLIFFORD,  JUSTICE 

opinion  on  assignees,  395. 

opinion  on  ethical  character  of  patents,  153. 

COLT,  JUDGE 

decision  on  liability  of  government  agents  for  infringement,  393. 
opinion  on  jurisdiction  of  equity,  593. 

COMBINATION 

claim  for,  not  to  be  broadened  by  construction,  186. 
dissolved  by  omission  of  any  one  element,  349. 
distinguished  from  aggregation,  32. 
every  part  of,  conclusively  presumed  to  be  material,  349. 
of  old  devices,  having  old  mode  of  operation,  37. 
patentability  of,  26,  33. 

COMITY 

between  courts  on  questions  of  fact,  635. 


INDEX.  711 

COMMISSIONER  OF  PATENTS 

appeals  to,  from  board  of  examiners-in-chief.  182. 

appeals  from,  to  Court  of  Appeals  of  District  of  Columbia,  1#>. 

erroneous  decision  of,  when  remedied  by  reissue,  'J','". 

force  of  decision  of,  in  application  cases,  148. 

force  of  decision  of,  in  extension  cases,  266. 

force  of  decision  of,  in  interference  cases,  142,  318. 

force  of  decision  of,  in  reissue  cases,  221. 

COMMON  LAW 

confers  no  paramount  right  in  inventions,  149. 

COMPLAINANT 

exceptions  of,  to  master's  report,  749. 
who  may  be,  in  patent  cases,  394-400,  574. 

COMPOSITIONS  OF  MATTER 

claims  in  specifications  of,  119. 

distinguishable  from  manufactures,  19. 

patents  for,  how  infringed,  369. 

prerequisites  of  patentability  of,  18. 

specimens  of,  128. 

subjects  of  patents,  1. 

the  various  classes  of,  in  respect  of  infringement,  374. 

COMPROMISE 

money  paid  in.  no  criterion  of  damages,  0.59. 

CONFORMITY  ACT 

Federal,  relevant  to  practice,  421. 

CONGRESS 

power  of,  to  promote  progress  of  science  and  useful  arts,  1 . 

CONSIDERATION 

partial  or  total  failure  to  pay,  for  assignment,  276. 

CONSTITUTION  OF  THE  UNITED  STATES 

foundation  of  United  States  patents,  1,  150. 

CONSTRUCTION 

of  assignments,  278. 
of  claims,  functional,  188. 

of  claims  in  the  light  of  the  state  of  the  art.  184. 
of  claims  narrowly,  when  necessary  to  save  their  validity.  1H.V 
of  claims,  not  by  artificial  rules.  117«. 
of  letters  patent,  181. 

of  letters  patent  according  to  contemporaneous  laws.  188. 
of  letters  patent  after  disclaimer,  207. 

of  letters  patent  in  the  light  of  contemporaneous  construction  of 
the  inventor,  187. 


712  INDEX. 

CONSTRUCTION —  Continued 

of  letters  patent  in  the  light  of  Patent  Office  restrictions,  187«. 

of  letters  patent  in  the  light  of  expert  testimony,  189,  500. 

of  letters  patent  on  motions  for  preliminary  injunctions,  676. 

of  letters  patent,  question  of  law,  189 

of  letters  patent  with  proper  liberality,  185. 

of  letters  patent  with  proper  strictness,  186. 

of  licenses,  306. 

of  reissues,  248. 

of  title  papers  on  motions  for  preliminary  injunctions,  675. 

CONTEMPT  OF  COUET 

how  punished,  710. 

CONTRIBUTION 

between  joint  inf ringers,  531. 

CORPORATIONS 

as  defendants  in  patent  cases,  401,  409. 

assignments  of  patents  to,  275. 

consolidated,  as  defendants,  416. 

consolidated,  invoking  licenses  given  to  their  constituents,  310. 

consolidated,  succeeding  to  patent  rights  of  their  constituents,  285. 

dissolution  of,  pendente  lite,  700. 

how  mentioned  in  declarations  and  bills,  422,  578. 

where  suable  for  infringements  of  patents,  389. 

COSTS 

in  cases  of  disclaimer,  205,  208. 

in  cases  of  new  trials,  539. 

in  favor  of  whom  recoverable,  543,  545. 

may  include  what,  544-549. 

on  amendment  of  bills,  586. 

taxed  how,  544-549. 

where  equity  refuses  to  take  jurisdiction,  594. 

COUNTIES 

as  defendants  in  infringement  suits.  401. 

COURTS 

circuit,  bills  in,  to  compel  issue  of  letters  patent,  134. 

circuit,  jurisdiction  of,  over  patent  actions  against  government 

agents,  393. 
circuit,  titles  of,  422. 

comity  between,  on  questions  of  fact,  635. 
having  original  jurisdiction  in  actions  for  infringement,  379. 
having  jurisdiction  in  qui  tarn  actions,  331. 
having  jurisdiction  to  grant  injunctions,  658. 
having  jurisdiction  to  repeal  patents,  323. 
having  appellate  jurisdiction,  133,  134,  550,  644a,  654,  696a. 


INDEX.  713 

COURT  OF  CLAIMS 

jurisdiction  of,  in  certain  patent  cases,  391,  392. 
COXE,  JUDGE 

opinion  on  disclaimers,  209. 

CREDITORS'  BILLS 

patent  rights  subject  to,  156. 
titles  transferred  by,  289. 

CROSS  APPEALS 

to  Circuit  Court  of  Appeals,  655. 

CROSS  BILLS 

not  required  in  interference  actions,  316. 
CURTIS,  JUSTICE 

opinion  on  abandonment,  89. 

opinion  on  invention,  33. 

opinion  on  mode  of  operation,  346. 
DAM  AGES 

accruing  before  surrender  and  reissue.  231. 

actual,  not  lessened  by  ignorance  of  patent,  569. 

decrees  for,  573. 

evidences  of,  502,  565,  636. 

excessive  assessment  of,  how  remedied,  539. 

exemplary,  567. 

for  infringement  of  design  patents,  571<z. 

for  infringement  by  making,  564. 

generic  measure  of,  555. 

how  stated  in  declarations,  436. 

include  no  counsel  fees  or  other  expenses  of  litigation,  570. 

increased,  568. 

interest  on,  571. 

jurisdiction  of  equity,  to  assess,  573. 

measures  of,  555-563. 

no  measure  of  profits,  716. 

not  measured  by  what,  559,  560. 

remote  consequential,  566. 

resulting  to  defendants  from  improper  injunctions,  696. 

when  measured  by  royalties,  562. 

DANIEL,  JUSTICE 

opinion  on  ethical  character  of  patents,  153. 

DATES 

of  applications,  how  proved,  129. 
of  applications,  significance  of,  180a. 
of  invention,  the  only  issue  in  interference  actions,  317. 
of  patented  inventions,  how  fixed  and  how  proved,  60,  69,  70.  510. 
of  unpatented  inventions,  when  fixed  by  aid  of  abandoned  applica- 
tions, 59. 


714  INDEX. 

DECLARATIONS 

commencement  of,  422. 

conclusion  of.  437. 

degree  of  correctness  required  in,  438. 

in  trespass  on  the  case,  422-438. 

statement  of  right  of  action  in,  423-436. 

title  of  court  in,  422. 

title  of  term  in,  422. 

venue  in,  422. 

when  dernurrable  in  patent  actions,  483. 

DECREES 

action  of  Circuit  Court  of  Appeals  upon,  656. 

appeals  from,  644a,  654,  696a. 

by  consent  of  defendants  when  injunction  is  based  on,  709. 

consent,  when  foundation  of  preliminary  injunctions  against  third 

parties,  672. 

final,  when  entered,  649. 
for  pecuniary  recoveries,  573. 

how  assailable  in  the  Circuit  Court  of  Appeals,  655. 
in  interference  actions,  320. 
interlocutory,  644.' 

interlocutory,  not  pleadable  as  res  judicata,  468. 
interlocutory,  when  including  orders  for  permanent  injunctions,  697. 
performance  of,  before  filing  bills  of  review,  650. 
pro  confesso,  pleadable  as  res  judicata,  468. 
pro  confesso,  when  foundation  of  right  to  preliminary  injunctions, 

671. 
reversal  of,  by  Circuit  Court  of  Appeals,  resulting  in  dismissal  of 

bill,  704 
where  disclaimers  are  found  necessary,  209. 

DEFECTIVE 

meaning  of  the  word,  in  the  law  of  reissues,  217. 

DEFENCES 

based  on  expiration  of  patent,  441. 

based  on  omission  to  mark  "  patented,"  441. 

based  on  repeal  of  patent,  441. 

in  respect  of  their  classification,  441. 

in  respect  of  special  pleading,  442. 

laches,  how  set  up,  597. 

the  twenty-seven,  440,  591. 

those  pleadable  by  the  general  issue,  with  notice  of  special  matter, 

443. 

to  bills  in  equity,  588. 

to  bills  in  the  nature  of  supplemental  bills,  631. 
to  motions  for  preliminary  injunctions,  677-684. 


INDEX.  715 

DEFENCES—  Continued 

to  supplemental  bills,  631 . 

where  licensee  is  sued  as  iufringer.  309 

which  assail  reissues,  441. 

which  deny  validity,  441. 

DEFENDANTS 

costs  recoverable  by,  543. 

death  of,  pendente  lite,  TOO. 

doings  of,  how  proved  by  plaintiffs.  497. 

evidence  in  chief,  503-534. 

in  actions  at  law,  401-416. 

in  actions  in  equity,  401-416,  575. 

in  patent  actions  generally,  401  -416. 

where  suable  for  infringement,  389,  390. 

DEGREE 

change  of,  in  respect  of  patentability,  31,  31«. 

DEMURRERS  IN  ACTIONS  AT  LAW 
dangers  of,  486. 
function  of,  482. 
to  declarations,  482,  483. 
to  pleas,  482,  484. 
to  replications,  482. 
to  rejoinders,  482. 

DEMURRERS  IN  ACTIONS  IN    EQUITY 
setting  up  laches,  597. 
setting  up  non-jurisdiction  of  equity,  594. 
sustaining  to  bills,  649 

take  precedence  of  motions  for  preliminary  injunctions,  663. 
to  bills,  588. 

to  bills  in  the  nature  of  supplemental  bills,  631. 
to  supplemental  bills,  631. 

DEPOSITIONS 

in  actions  at  law,  535. 

in  actions  in  equity,  639. 

used  in  cases  other  than  those  in  which  taken,  640. 

DESCRIPTIONS 

defective,  218. 

errors  in,  175. 

excess  of,  175. 

fullness  of,  174. 

in  general,  111,  115. 

insufficient,  218. 

need  not  be  changed  in  cases  of  disclaimer,  207. 

vague,  how  affecting  letters  patent,  178. 


716  INDEX. 

DESIGNS 

claims  for,  120a. 

novelty  of,  64. 

on  whose  invention  patentable,  21. 

subjects  of  patents,  20. 

utility  of,  22 

DESIGN  PATENTS 

damages  for  infringement  of,  571a. 

duration  of,  162. 

fees  for,  125. 

how  infringed,  375. 

profits  for  infringement  of,  723#. 

DESTRUCTION 

of  infringing  articles,  644.N 

DIFFERENCE 

what  degree  of,  inconsistant  with  negation  of  novelty,  57. 

DIRECTORS 

of  corporations  as  defendants,  410,  411,  414,  415. 

DISCLAIMERS 

as  documents,  193. 

based  on  mistakes  of  fact,  195. 

based  on  mistakes  of  law,  196 

causes  of  necessity  for,  193. 

costs  in  cases  of,  205. 

decrees,  in  cases  of  necessity  for,  209. 

delay  to  file,  when  beginning,  204. 

effect  of,  on  pending  actions,  193. 

errors  which  justify,  194. 

errors  which  do  not  justify,  197. 

filed  by  part  owner,  206. 

filed  pending  suit,  208. 

function  of,  197. 

how  affected  by  fraudulent  or  deceptive  intention,  202. 

how  stated  in  declarations,  430. 

in  respect  of  combination  claims,  198. 

in  respect  of  compound  claims,  199. 

in  respect  of  immaterial  claims,  200. 

letters  patent,  how  construed  after,  207. 

need  not  change  description,  207. 

of  equivalents,  372. 

of  reissue  claims.  201. 

right  of  appeal  on,  necessity  for,  209. 

statements  in,  206. 

statutory  authorization  of,  192. 


INDEX.  717 

DISCLAIMED — Continued 

subjects  of,  not  reclaimable  by  reissue  or  otherwise,  209. 

unreasonable  delay  to  file,  203,  208. 

unreasonable  delay  to  file,  how  pleaded  in  actions  at  law.  4.">d 

unreasonable  delay  to  file,  how  pleaded  in  actions  in  equity,  609. 

unreasonable  delay  to  file,  how  proved,  521. 

working  abandonment  of  invention,  90. 

DISCOVERY 

patent-law,  meaning  of  the  word,  2. 

DISTRICT  COURTS  OF  THE  UNITED  STATES 

jurisdiction  of,  in  gui  tarn  actions,  324 

DISTRICTS 

wherein  defendants  may  be  sued,  389. 

DIVISION  OF  OPINION 

certificate  of,  657. 

DOUBLE  USE 

not  invention,  38. 

DRAWINGS 

amendment  of,  138,  214. 

constitute  part  of  letters  patent,  172, 

description  of,  in  specification,  111,  114. 

in  prior  patents  or  printed  publications,  56. 

may  aid  construction  of  claims,  182. 

may  constitute  birth  of  subsequently  patented  invention,  70. 

unpublished,  never  negative  novelty,  61. 

what  must  show,  126. 

when  required,  126. 

DRU.MMOND,  JUDGE 

decision  on  "finding"  defendants,  389. 

DUE  PROCESS  OF  LAW 

meaning  of  the  phrase,  151. 
statutes  are  not,  158. 

ELECTRIC  LIGHT  PATENT 
Edison,  31a. 

EMPLOYERS 

as  defendants,  404. 

EMPLOYEES 

as  defendants,  403 


718  INDEX. 

EQUITY 

hearings  in,  632, 

jurisdiction  of,  in  infringement  cases,  572,  592,  593. 
jurisdiction  of,  in  infringement  cases,  not  dependent  on  prior  adju- 
dication at  law,  595. 

jurisdiction  of,  over  interfering  patents,  316. 
jurisdiction  of,  to  repeal  patents,  322. 
laches  a  defence  in,  591,  596. 
non-jurisdiction  of,  591,  592. 
non-jurisdiction  of,  how  set  up,  594. 
profits  recoverable  in,  711. 

EQUIVALENTS 

among  elements  of  processes,  338. 
among  ingredients  of  compositions  of  matter,  370. 
defined,  354. 
disclaimed,  372. 
element  of  age  in,  354. 
inquired  into,  354. 
meaning  of  the  word,  352-354. 
substitution  of,  not  invention,  36. 
tests  of,  362. 

where  claimable  in  reissues,  when  not  described  or  claimed  in  orig- 
inals, 247. 

ERRORS 

of  judge  or  jury,  when  ground  for  new  trial,  539. 

ESTATES 

in  patent  rights,  274. 

ESTOPPEL 

by  matter  of  deed,  469. 

by  matter  in  pats,  313. 

by  matter  of  record,  468. 

classes  of,  467. 

conveying  title,  275. 

elements  of,  313. 

in  actions  at  law,  440,  467. 

in  actions  in  equity,  591.  621. 

in  interferences,  141. 

on  motions  for  preliminary  injunctions,  683. 

pleaded  how,  in  actions  at  law,  470. 

pleaded  how,  in  actions  in  equity,  621. 

proved  how,  533. 

working  implied  license,  313. 

EVICTION 

of  licenses,  307. 


INDEX.  719 


EVIDENCE 


before  masters,  740,  741. 

complainant's,  in  chief,  636. 

defendant's,  in  chief,  503-534. 

documentary,  in  equity  cases,  641. 

how  far  to  be  set  forth  in  bills  of  exceptions,  551 .  552. 

in  disproof  of  infringement,  when  unnecessary,  582. 

in  equity  cases,  637. 

in  interference  actions,  318. 

newly  discovered,  when  ground  for  new  trial,  539. 

newly  discovered,  when  ground  for  rehearing,  647. 

newly  discovered,  when  ground  for  bill  of  review,  652. 

objections  to  before  masters,  741. 

objections  to,  for  want  of  pleading,  600. 

objections  to,  when  to  be  made,  535 

of  absence  of  inadvertauce,  accident,  and  mistake,  522. 

of  actual  abandonment,  512. 

of  constructive  abandonment,  513. 

of  damages,  502,  565. 

of  deceitfully  lacking  or  excessive  specification,  518. 

of  estoppel,  533. 

of  experts,  498. 

of  expiration  of  patent  before  end  of  apparent  term,  527. 

of  facts  to  sustain  defence  in  Miller  v.  Brass  Co.,  523. 

of  facts  to  sustain  defence  in  Miller  v.  Eagle  Co.,  525. 

of  infringement,  497-501. 

of  joint  invention  for  sole  patent.  516. 

of  lack  of  identity  between  application  and  letters  patent,  514. 

of  lack  of  identity  between  letters  patent  and  reissue,  459,  524. 

of  licenses,  530. 

of  marking  patented,  496. 

of  non-infringement,  532. 

of  not  being  a  proper  subject  of  a  patent,  504. 

of  omission  to  mark  "  patented,"  528. 

of  prior  knowledge  or  use,  508. 

of  prior  patents,  506. 

of  prior  printed  publications,  507. 

of  profits,  636,  740. 

of  release,  531, 

of  repeal  of  patent,  526. 

of  res  judicata,  533. 

of  sole  invention  for  joint  patent,  517. 

of  surreptitious  or  unjust  obtaining  of  patent,  515. 

of  title.  495. 

of  unreasonable  delay  to  file  disclaimer,  521 . 

of  want  of  invention,  505. 

of  want  of  novelty,  506  -510. 


720  INDEX. 

EVIDENCE — Continued. 

of  want  of  title,  529. 

of  want  of  utility,  511. 

plaintiffs,  in  chief,  491. 

rules  of,  in  interferences,  141. 

rules  of,  in  patent  actions,  490. 

that  claims  are  indistinct,  520. 

that  specification  is  insufficient,  519. 

to  rebut  defence  of  laches,  636. 

to  rebut  defence  of  want  of  novelty,  509,  510. 

to  support  defence  of  laches,  637 

to  support  plea  of  statute  of  limitation,  534. 

EXAMINATION 

of  applications,  130. 

EXAMINERS-IN-CHIEF 

appeals  to  board  of,  132. 

EXCEPTIONS 

to  instructions,  and  to  refusals  to  instruct,  553,  554. 

EXECUTORS  AND  ADMINISTRATORS 

applying  for  letters  patent,  110,  171. 

applying  for  Patent-Office  extensions,  261. 

applying  for  reissues,  250. 

as  plaintiffs  or  complainants,  396. 

filing  disclaimers,  206. 

oath  of,  to  applications,  123. 

reissue  granted  to  one  of  several,  251. 

EXPERIMENTAL  USE 

distinguished  from  "  public  use,"  95. 

PERTS 

cross-examination  of,  501. 

hypothetical  questions  put  to,  499. 

testimony  of,  affecting  construction  of  leters  patent,  189,  500. 

testimony  of,  on  motions  for  preliminary  injunctions,  676. 

testimony  of,  regarding  the  state  of  the  art,  500. 

testimony  of,  relative  to  infringement,  498. 

testimony  of,  relative  to  non-infringement,  532. 

EXPIRATION  OF  PATENT 

how  pleaded  in  actions  at  law,  462. 
how  pleaded  in  actions  in  equity,  615. 
how  proved.  527. 


INDEX.  721 

EXTENSIONS 

application  for  Patent-Office  extension,  261. 

assignability  of  inchoate  right  to  Patent-Office  extension,  2T8. 

assignment  of,  280. 

constitutional  foundation  of,  255. 

congressional,  256. 

congressional,  how  effected,  257. 

congressional,  whom  for  benefit  of,  258. 

facts  justifying  Patent-Office  extension,  267. 

fraud  in  procuring  or  granting  Patent-Office  extension,  269. 

how  stated  in  declarations,  431. 

Patent-Office  extensions,  259. 

Patent-Office  extensions,  applications  for,  261 . 

Patent-Office  extensions,  certified  how,  265. 

Patent-Office  extensions,  grantable  when,  262,  264. 

Patent-Office  extensions,  inventors'  rights  therein,  263. 

Patent-Office  extensions,  operation  of,  on  existing  specimens  of  the 

invention,  270,  271. 

Patent-Office  extensions,  proceeding  on  applications  for,  268. 
Patent-Office  extensions,  repeal  of,  269. 
Patent-Office  extensions,  statutory  foundation  of,  260. 

FAULTS 

which  cause  patents  to  be  reissuable,  218. 

FEES 

attorneys'  docket,  taxable  as  costs,  545. 
clerks',  taxable  as  costs,  546. 
commissioners',  taxable  as  costs,  547. 
final  Patent-Office,  103,  125. 
witness,  taxable  as  costs,  548. 

FIELD,  JUSTICE 

opinion  on  jurisdiction  of  State  courts,  380. 

FIFTH  AMENDMENT 

to  Constitution  of  United  States,  151,  158. 

FINDING 

of  judge,  when  trying  action  at  law  without  a  jury,  540. 

FOR  THE  PURPOSES  SET  FORTH 
nature  of  the  phrase,  182. 

FOREIGN  COUNTRY 

knowledge  or  use  in,  prior  to  patentee's  invention,  54. 
public  use  or  Hale  in,  more  than  two  years  prior  to  patentee's 
application,  101. 


722  INDEX. 

FOREIGN  PATENTS 

mentioned  in  preamble  to  specification,  111. 
operation  on  novelty,  55. 

FORFEITURE 

not  favored  in  the  law,  108. 
of  licenses,  308,  309. 

FORM 

as  affecting  questions  of  infringement,  363-368. 
as  affecting  questions  of  invention,  41. 

FRAUD 

in  granting  or  procuring  letters  patent,  321. 
in  granting  or  procuring  Patent-Office  extensions,  269. 
remedy  for,  in  granting  or  procuring  letters  patent,  extensions,  or 
reissues,  321-323. 

FUNCTIONS 

considered  in  respect  of  equivalents,  352. 

difference  of,  consistent  with  identity  of  invention,  180«. 

good,  in  wrong  places,  84. 

not  subjects  of  patents,  3. 

performed  in  "  substantially  the  same  way,"  353. 

thought  by  some  to  be  good,  and  by  others  to  be  evil,  83. 

which  sometimes  work  good,  and  sometimes  evil,  82. 

QILBERT,  JUDGE 

opinion  on  invention,  35. 

GOVERNMENT  OF  THE  UNITED  STATES 

has  no  special  right  to  patented  inventions,  157. 

GRANTS 

of  rights  under  letters  patent,  287. 
operation  of,  extra  territorially,  288. 

GRANTEES 

joining  in  actions  for  infringement,  399. 
need  not  join  in  surrender  and  reissue,  252. 
rights  of,  under  reissues,  253. 

GRIER,  JUSTICE 

opinion  on  mode  of  operation,  344,  345. 

HALL,  JUDGE 

opinion  on  abandonment  of  patents,  107. 
opinion  on  witness  fees  taxable  as  costs,  548. 

HAMILTON,  ALEXANDER 

opinion  on  jurisdiction  of  State  courts,  380. 


INDEX.  723 

HEARING 

final,  633. 

interlocutory,  633. 

of  motions  for  preliminary  injunctions,  662. 

HUGHES,  JUDGE 

opinion  on  actions  of  assumpsit  for  infringement  of  patents,  419. 

HUNT,  JUSTICE 

opinion  on  bill  seeking  a  decree  of  non-infringement,  585. 

IDENTITY 

degree  of,  involved  in  constructive  abandonment,  98. 

lack  of,  between  application  and  letters  patent,  how  pleaded  in 

actions  at  law,  450. 
lack  of,  between  application  and  letters  patent,  how  pleaded  in 

actions  in  equity,  603. 

lack  of,  between  application  and  letters  patent,  how  proved,  514. 
lack  of,  between  letters  patent  and  reissue,  how  pleaded  in  actions 

at  law,  459. 
lack  of,  between  letters  patent  and  reissue,  how  pleaded  in  actions 

in  equity,  612. 

lack  of,  between  letters  patent  and  reissue,  how  proved,  524. 
presence  of,  between  several  patents  to  one  inventor,  how  pleaded 

in  actions  at  law,  460. 
presence  of,  between  several  patents  to  one  inventor,  how  pleaded 

in  actions  in  equity,  613. 
presence  of,  between  several  patents  to  one  inventor,  how  proved, 

525. 
presence  of,  between  several  patents  to  one  inventor,  how  tested, 

180«. 

IGNOKANCE 

of  anticipating  matter  never  averts  negation  of  novelty.  73. 
of  letters  patent  never  averts  judgment  or  decree  for  infringement, 
377,  569. 

IMPROVEMENT 

a  subject  of  a  patent,  1. 

may  or  may  not  be  invention,  16. 

sorts  of,  16. 

INADVERTENCE 

causing  reissuable  faults,  220. 

INADVERTENCE,  ACCIDENT,  AND  MISTAKE 
absence  of,  how  proved,  522. 


724  INDEX. 

•          V 

INFRINGEMENT 

absence  of,  how  proved,  532. 

beyond  the  jurisdiction  of  the  court,  676. 

by  making,  damages  for,  564. 

by  making  and  selling,  damages  for,  561. 

by  making  and  selling,  profits  derived  from,  717-723,  735. 

by  making  and  using,  damages  for,  561. 

by  selling,  damages  for,  563. 

by  selling,  profits  derived  from,  724. 

by  using,  damages  for,  561. 

by  using,  profits  derived  from,  725-734. 

by  making,  by  using,  and  by  selling,  suable  in  one  action,  417. 

cessation  of,  no  defence  to  a  motion  for  a  preliminary  injunction, 

676,  701. 
committed  in  the  Northern  District  of  New  York,  not  suable  in 

Southern  District  of  that  State,  390. 
denial  of,  how  pleaded  in  actions  at  law,  466. 
denial  of,  how  pleaded  in  actions  in  equity,  620. 
different  sorts  of.  how  treated  by  masters,  743. 
doubtful  questions  of,  not  decided  on  motions  for  attachment,  708. 
extent  of,  ascertained  by  masters,  742. 
how  stated  in  bills  of  complaint,  579. 
how  stated  in  declarations,  434,  435. 
ignorance  no  excuse  for,  377. 
of  design  patents,  375. 

of  patents  for  compositions  of  matter,  369-372. 
of  patents,  involves  infringement  of  claims,  339. 
of  process  patents,  335-338. 
of  primary  patents,  359,  362. 
of  secondary  patents,  359,  362. 

of  two  or  more  terms  of  a  patent,  suable  in  one  action,  417. 
option  to  sue  for  infringement  or  for  royalty,  309. 
partly  unprofitable,  713. 
plaintiff's  evidence  of,  497-501. 
proof  of,  or  of  danger  of,  on  motions  for  preliminary  injunctions, 

676. 

qestions  of,  as  affected  by  addition,  347. 
questions  of,  as  affected  by  change  of  form,  363-368. 
questions  of,  as  affected  by  made  of  operation,  341-346. 
questions  of,  as  affected  by  omission,  349. 
questions  of,  as  affected  by  rearrangement  of  parts,  348. 
questions  of,  as  affected  by  results,  340. 
questions  of,  as  affected  by  substitution  of  parts,  350. 
questions  of,  as  affected  by  utility,  376. 
questions  of,  not  to  be  taken  to  Circuit  Court  of  Appeals  on  cer- 

tificates  of  division  of  opinion,  657. 
repeated,  suable  on,  in  one  action,  435. 


INDEX.  725 

INJUNCTIONS 

acquiescence  of  the  public  as  foundation  for  preliminary.  667  670. 

against  corporations,  upon  what  persons  binding,  708. 

appeals  from,  644a,  696a. 

averted  by  proof  of  estoppel,  683. 

averted  by  proof  of  expiration  or  repeal  of  patent,  681. 

averted  by  proof  of  laches,  684. 

averted  by  proof  of  license.  682. 

averted  by  proof  that  patent  is  void,  679,  680. 

bills  for,  660. 

bonds  pending  motions  for  preliminary,  668. 

consent  decree,  when  foundation  for  preliminary,  672,  709. 

decree,  pro  confesso  as  a  foundation  for  preliminary,  671. 

defences  to  preliminary,  when  set  up  in  answer,  694. 

defendant's  admission  of  validity,  when  foundation  for  preliminary, 
678. 

description  in  preliminary,  702. 

dissolution  of  permanent,  704. 

dissolution  of  preliminary,  659. 

duration  of,  in  general,  706. 

duration  of,  when  granted  by  district  judge  in  vacation,  707. 

foundation  of  right  to  preliminary,  665. 

hearing  of  motions  for  preliminary,  662. 

imperative  character  of  right  to  preliminary,  685. 

interference  decision,  when  foundation  for  preliminary,  674. 

jurisdiction  to  grant,  658, 

motions  for  preliminary,  662. 

motions  to  dissolve  preliminary,  692-694.  . 

motions  to  reinstate  dissolved  preliminary.  695. 

motions  to  dissolve  reinstated  preliminary,  695. 

motions  for  attachment  for  violation  of,  708-709. 

not  averted  by  cessation  of  infringement,  701. 

not  averted  by  existence  of  remedy  at  law,  689. 

not  granted  on  trivial  infringements,  705. 

not  granted  to  restrain  complainants  from  suing  third  parties,  705. 

not  granted  to  restrain  issue  of  letters  patent,  184. 

notice  of  motions  for  preliminary,  661 . 

obedience  to,  insisted  upon,  696. 

on  bills  in  interference  actions,  819. 

penalty  for  disobeying,  710. 

permanent,  when  granted.  697. 

permanent,  when  postponed,  702. 

permanent,  when  refused,  698-700. 

permanent,  when  suspended  pending  appeal.  654.  708. 

preliminary,  659. 

preliminary,  when  averted  by  proof  that  acquiescence  was  collu- 
sive, 680. 


726  INDEX. 

INJ  UNCTIONS —  Continued 

preliminary,  when  based  on  prior  adjudications,  666. 
proof  of  complainant's  title  a  necessary  element  in  right  to,  675. 
proof  of  infringement,  or  danger  of  infringement,  a  necessary  ele- 
ment in  right  to,  676. 
suspension  of,  pending  appeal,  654,  703. 
suspension  of  motions  for  preliminary,  663. 

temporary  restraining  order  pending  motion  for  preliminary,  664. 
to  restrain  actions  at  law,  705. 

to  restrain  unauthorized  marking  of  patented  articles,  333. 
to  restrain  wrongful  declarations  of  forfeiture  of  licenses,  308. 
violations  of,  how  punished,  710. 
void  when  granted  without  jurisdiction,  696. 
when  granted  after  expiration  of  patent,  698. 
when  granted,  pro  confesso,  690. 
writ  of,  708. 

IMPERATIVENESS 

a  cause  of  reissuability,  216,  218,  219. 

INSTRUCTIONS 

exceptions  to,  553,  554. 
how  reviewed,  552. 
to  be  given  in  writing,  537. 
what  must  embody,  537. 

INSUFFICIENT 

meaning  of  the  word  in  the  law  of  reissues,  217. 

INTEREST 

on  damages,  571. 
on  profits,  736. 

INTERFERENCES 

defined,  140. 

number  of  possible,  141. 

when  decision  in,  is  foundation  for  preliminary  injunctions,  674. 

INTERFERENCE  ACTIONS  IN  EQUITY 
authorized,  316. 
issues  in,  317. 
evidence  in,  318. 
decrees  in,  320. 

INTERFERING  PATENTS 
causes  of,  315. 
defined,  315. 

INVALIDITY 

when  a  cause  of  reissuability,  216. 


INDEX.  727 

INVENTION 

absent  from  mere  aggregation,  32. 

absent  from  mere  change  in  degree,  31. 

absent  from  mere  duplication,  34. 

absent  from  mere  enlargement,  30. 

absent  from  mere  improvement  in  workmanship,  27. 

absent  from  mere  omission  of  parts,  35. 

absent  from  mere  substitution  of  equivalents,  36. 

absent  from  mere  substitution  of  superior  materials,  28. 

absent  from  new  combination  of  old  devices  having  no  new  mode 

of  operation,  37. 

absent  from  new  use  of  old  process  or  thing,  38. 
absent  from  product  of  mere  mechanical  skill,  25. 
evidence  of  want  of,  505. 
form  no  criterion  of,  41 . 
necessary  to  patentability,  23. 
patentable  but  once,  180«. 
questions  of  presence  or  absence  of,  are  determined  by  negative 

rules,  24. 

questions  of  presence  or  absence  of,  are  questions  of  fact,  42. 
questions  of  presence  or  absence  of,  are  sometimes  affected  by  the 

state  of  the  art,  43. 
questions  of  presence  or  absence  of,  are  sometimes  determined  by 

comparative  utility,  40. 
want  of,  how  pleaded  in  actions  at  law,  446. 
want  of,  how  pleaded  in  actions  in  equity,  599. 
want  of.  how  proved,  505. 

JOINT  INFRINGEMENT 

facts  which  constitute,  407. 
profits  recoverable  in  cases  of,  712. 

JOINT  INFRINGEBS 

as  defendants,  406. 
contribution  between,  581. 
releases  to  one  of  several,  531. 

JOINT  INVENTION 

distinguished  from  sole  invention,  45,  46. 
distinguished  from  suggestions  to  sole  inventor,  47. 
for  sole  patent,  how  pleaded  in  actions  at  law,  452. 
for  sole  patent,  how  pleaded  in  actions  in  equity,  605. 
for  sole  patent,  how  proved,  516. 
for  sole  patent,  voids  the  patent,  50. 

JOINT  PATENT 

for  sole  invention,  how  pleaded  in  actions  at  law,  452. 
for  sole  invention,  how  pleaded  in  actions  in  equity,  605. 
for  sole  invention,  how  proved,  517. 
for  sole  invention,  voids  the  patent.  51. 


728  INDEX. 

JUDGES 

directing  juries  to  find  verdicts  for  defendants,  536. 
trying  actions  at  law  without  juries,  540. 

i 
JUDICIAL  NOTICE 

in  respect  of  pleadings,  445. 

when  taking  the  place  of  evidence,  505,  599. 

JUDGMENTS 

by  default  pleadable  as  resjudicata,  468. 

for  amount  larger  than  verdict,  finding,  or  report,  542. 

when  and  how  entered,  542. 

JUNIOB  PATENT 

conformity  to,  of  defendant's  doings,  relevant  to  motions  for  pre- 
liminary injunctions,  687. 

conformity  to,  of  defendant's  doings,  relevant  to  trial  of  issue  of 
infringement  in  action  at  law,  532. 

JURISDICTION 

consent  of  parties  cannot  confer,  390. 

in  interference  actions,  316. 

in  qui  tain  actions,  331. 

of  Commissioner  of  Patents,  to  issue  letters  patent,  148,  178. 

of  Commissioner  of  Patents  to  grant  extensions,  266, 

of  Commissioner  of  Patents  to  grant  reissues,  211-221. 

of  Circuit  Courts  over  actions  for  infringement  against  agents  of 

the  United  States  Government,  393. 
of  Court  of  Claims  in  patent  cases,  391,  392, 
of  courts  of  first  resort  in  patent  cases,  379, 
of  equity  in  patent  cases,  572,  573,  592,  593,  658,  689. 
of  individual  Federal  courts,  of  first  resort  in  patent  cases,  389. 
of  State  courts  to  enforce  or  set  aside  contracts  relevant  to  patents, 

388. 

original  in  patent  cases,  379. 
question  of  jurisdiction  of  State  courts  in  infringement  cases,  380. 

JURIES 

instructions  to,  537. 

when  directed  to  find  a  verdict  for  defendants,  536. 

JURY  TRIALS 

in  actions  at  law,  488. 
in  actions  in  equity,  632. 

KENT,  CHANCELLOR 

opinion  on  jurisdiction  of  State  courts,  380. 


INDEX.  729 

KNOWLEDGE 

fund  of,  required  by  inventors,  48. 

in  foreign  country,  54. 

inventor  presumed  to  have,  of  state  of  the  art,  43. 

lack  of,  of  anticipating  matter,  on  the  part  of  patentees,  73. 

necessary  to  acquiescence,  312. 

of  patent  not  necessary  to  constitute  infringement,  377. 

public,  works  no  constructive  abandonment,  100. 

what  must  include,  in  order  to  negative  novelty,  72. 

LACHES 

a  defence  in  equity,  591,  596. 

a  defence  to  a  motion  for  a  preliminary  injunction,  684. 

defence  of,  how  guarded  against,  597. 

how  set  up  as  a  defence,  597. 

working  abandonment  of  application  and  invention,  145. 

working  abandonment  of  invention,  91. 

LAPSE  OF  TIME 

before  applying  for  broadened  reissue,  226,  227. 

LAW 

sources  of,  537,  634. 

LAW  OF  THE  CIRCUIT 

meaning  of  the  phrase,  634. 

LAWS  OF  NATURE 

not  subjects  of  patents,  2. 

LEAVITT,  JUDGE 

opinion  on  witness  fees  taxable  as  costs,  548. 

LESSORS 

of  infringing  machines,  as  defendants,  405. 

LETTERS  PATENT 

apparently  in  force,  primafacte  evidence  that  they  have  not  expired 

or  been  repealed,  494. 
as  documents,  172. 
bill  in  equity  to  compel  issue  of,  134. 
claims  of,  176,  177. 
constituents  of,  172. 
construction  of,  181. 
construction  of,  a  question  of  law,  189. 
constructive  notice  to  all  persons,  191. 
construed  according  to  contemporaneous  statutes,  188. 
construed  in  light  of  contemporaneous  construction  of  inventor, 

187. 


730  INDEX. 

LETTEBS  PATENT — Continued 

construed  in  light  of  expert  testimony,  189. 

construed  in  light  of  Patent  Office  restrictions,  187a. 

construed  in  light  of  the  state  of  the  art,  184. 

construed  with  proper  liberality,  185. 

construed  with  proper  strictness,  186. 

description  in,  affecting  constructions  of  claims,  182. 

duration  of,  162,  163. 

errors  in,  when  fatal  to  validity  of, "172. 

extent  of,  160,  161. 

granted  to  whom,  110,  171. 

how  affected  by  vague  description  of  claims,  178. 

how  construed  after  disclaimer,  207. 

how  set  out  in  declarations,  428. 

matters  of  public  record,  191. 

nature  of,  151-157. 

only  one  for  one  invention,  180a. 

presumed  to  be  for  same  invention  as  application,  190. 

prima  facie  evidence  of  their  own  validity,  491. 

separate,  granted  for  different  parts  of  one  machine,  180. 

signed  by  whom,  172. 

surrender  of,  105. 

surreptitious  or  unjust  obtaining  of,  how  pleaded  in  actions  at  law, 

451. 
surreptitious  or  unjust  obtaining  of,  how  pleaded  in  actions  in  equity, 

604. 

the  description  in,  174,  175. 

valid  as  to  one  or  more  claims  while  void  as  to  the  residue,  177. 
when  may  cover  plurality  of  inventions,  180. 

LICENSES 

arising  from  acquiescence,  312. 

arising  from  estoppel,  312,  313. 

arising  from  recovery  of  damages  or  profits,  314. 

as  defences'to  motions  for  preliminary  injunctions,  682. 

assignability  of,  310. 

construction  of.  306. 

defined,  296. 

duration  of,  308. 

express,  with  implied  incidents,  297-301. 

express,  without  implied  incidents,  300,  302. 

forfeiture  of,  308. 

from  one  of  several  mutual  owners,  305. 

how  pleaded  in  actions  at  law,  465. 

how  pleaded  in  actions  in  equity,  618. 

how  proved,  530. 

implied  from  conduct,  312. 

need^not  be  negatived  in  declarations,  434. 


INDEX.  731 

LICENSES—  Continued 

need  not  be  negatived  in  plaintiff's  evidence  in  chief.  496. 

none  required,  to  buy  specimens  of  patented  things,  299. 

notice  of,  304. 

purely  implied,  311. 

recording  of,  304. 

to  corporations,  310. 

to  one  of  several  joint  users,  305. 

to  partnerships,  310. 

written  or  oral,  303. 

LICENSEES 

how  suing  for  infringement,  400. 

need  not  join  in  surrender  and  reissue,  252. 

of  one  of  several  mutual  owners,  294,  305. 

when  evicted,  307. 

when  sued  as  infringers,  309. 

LIMITATION  OF  TIME 

relevant  to  beginning  actions,  472,  476,  477. 
relevant  to  filing  bills  of  review,  651, '652. 
relevant  to  filing  bills  of  revivor,  627. 

LOST  ART 

significance  of,  71. 

LOWELL,  JUDGE 

opinion  on  costs  in  cases  of  disclaimers,  205. 
opinion  on  experimental  use,  95. 
opinion  on  invention,  37. 
opinion  on  novelty,  69. 

opinion  on  liability  of  officers,  directors,  and  stockholders  of  cor- 
porations for  corporate  infringement,  410. 

MACHINES 

claims  in  specifications  of,  117. 
defined,  16. 

distinguishable  from  manufactures,  19. 
subjects  of  patents,  1. 

MAGISTRATES 

before  whom  oath  may  be  made  to  affidavits,  584. 
before  whom  oath  may  be  made  to  specifications,  122. 

MAKING 

more  than  two  years  before  application  for  letters  patent,  99. 

MANDAMUS 

to  compel  Commissioner  of  Patents  to  allow  appeal,  182. 
when  not  grantable,  184. 


732  INDEX. 

MANUFACTURES 

claims  in  specifications  of,  118. 

distinguishable  from  compositions  of  matter  and  from  machines,  19. 

patent-law  meaning  of  the  word,  17. 

subjects  of  patents,  1. 

MARKING  ' '  PATENTED  " 

making  or  selling  without,  how  far  a  defence  in  equity,  616. 
making  or  selling  without,  how  pleaded  in  actions  at  law,  468. 
making  or  selling  without,  how  pleaded  in  actions  in  equity,  616. 
making  or  selling  without,  how  proved,  528. 

making  or  selling  without,  must  be  negatived  by  plaintiff's  plead- 
ing and  evidence  in  chief,  433a,  496. 

MARRIED  WOMEN 

as  assignors  and  assignees  of  patent  rights,  275. 
as  defendants  in  patent  cases,  402. 

MARSHALL,  CHIEF  JUSTICE 

opinion  on  equity  jurisdiction,  395. 
opinion  on  reissues,  210. 

MASTERS  is  CHANCERY 

draft  reports  of,  744. 

exceptions  to  reports  of,  745-749. 

fees  of,  by  whom  paid,  739. 

final  reports  of,  750. 

hearing  in  equity  cases  before,  632,  643. 

infringement  investigated  by,  in  point  of  extent,  742. 

infringement  investigated  by,  in  point  of  varieties,  743. 

proceedings  before,  739-743. 

system  of  practice  relevant  to  findings  of,  750. 

taking  account  before  when  stopped,  648. 

MATTHEWS,  JUSTICE 

opinion  on  invention,  24,  32. 
opinion  on  disclaimers,  209. 

McCRARY,  JUDGE 

opinion  on  mode  of  operation,  343. 

MCKENNA,  JUDGE 

opinion  on  aggregation,  32. 
opinion  on  claims,  177. 

MCKINNON,  JUDGE 

opinion  on  novelty,  69. 

McLEAN,  JUSTICE 

opinion  on  witness  fees  taxable  as  costs,  548. 


INDEX.  733 

MEANS 

use  of  word  in  claims,  117a. 

MECHANIC-EMPLOYEES 

as  defendants  in  actions  for  infringement,  408. 

MENTAL  CONCEPTIONS 

inventions  do  not  date  from,  70. 

MILLER,  JUSTICE 

opinion  on  ethical  character  of  patents,  153. 

opinion  on  injunctions  after  expirations  of  patents,  698. 

MILLER  v.  BRASS  Co. 
defence  in,  226. 

defence  in,  how  pleaded  in  actions  at  law,  458. 
defence  in,  how  pleaded  in  actions  in  equity,  611. 
defence  in,  how  proved,  523. 

MILLER  v.  EAGLE  Co. 
defence  in,  180a. 

defence  in,  how  pleaded  in  actions  at  law,  460. 
defence  in  how  pleaded  in  actions  in  equity,  613. 
defence  in,  how  proved,  525. 

• 

MISTAKE 

causing  reissuable  faults,  220. 

justifying  disclaimers,  195,  196. 

remedy  for  issuing  or  obtaining  patent  through,  321. 

MODE  OF  OPERATION 

as  affecting  infringement,  341-346«. 
described  in  specifications,  111. 
novelty  of.  when  necessary  to  invention,  37. 
when  changed  by  omission  of  parts,  35. 

MODELS 

amendment  of.  138,  214. 

making  of  may  constitute  birth  of  subsequently  patented  inven- 
tions, 70. 

never  negative  novelty,  61. 
when  required,  127. 

MONTHS 

calendar,  not  lunar,  125. 

MORTGAGES 

of  patents,  288". 


734  INDEX. 

MOTIONS 

alleging  non-jurisdiction  of  equity,  594. 

for  attachments,  708-710. 

for  preliminary  injunctions,  659-663. 

to  dissolve  preliminary  injunctions,  659,  692-694. 

to  reinstate  dissolved  preliminary  injunctions,  695. 

to  dissolve  reinstated  preliminary  injunctions,  695. 

to  strike  evidence  from  the  record,  600. 

MOWRY  v.  WHITNEY 

the  rule  of  profits  in,  725-735. 

NELSON,  JUSTICE 

opinion  on  injunctions  in  interference  actions,  319. 
opinion  on  joint  invention,  46. 

opinion  on  liability  of  officers,  directors  and  stockholders  of  cor- 
porations, for  corporate  infringement,  410. 

NEW  MATTER 

in  reissues,  214. 

meaning  of  the  phrase,  240. 

NEW  TRIALS 

in  actions  at  law  for  infringement,  539. 

NEW  USE 

of  old  thing  not  invention,  38. 

NOTICE 

constructive  of  letters  patent.  191. 

of  licenses,  304. 

of  motions  for  preliminary  injunctions,  661. 

of  special  matter,  444. 

protecting  prior  unrecorded  assignments,  281. 

NOVELTY 

as  affected  by  another  patent  to  same  inventor  for  same  invention, 

69,  180a. 

as  affected  by  prior  abandoned  experiments,  63. 
defined,  53. 

depends  on  questions  of  fact,  75. 
evidence  of  want  of,  506-508. 
must  be  put  in  issue  in  declarations,  424. 
necessary  to  patentability,  52. 

negatived  by  prior  knowledge  and  use  in  this  country,  71. 
negatived  by  prior  making  in  this  country,  72. 
negatived  by  prior  patent,  54,  57. 
negatived  by  prior  printed  publication,  54,  55,  57. 
negation  of,  not  averted  by  ignorance  of  anticipating  matter,  73. 
negation  of,  not  averted  by  producing  old  thing  from  new  source,  74. 
not  negatived  by  antiquity  of  part,  66. 


INDEX.  735 

NOVELTY — Continued" 

not  negatived  by  anything  neither  designed,  apparently  adapted, 
nor  actually  used,  to  perform  the  same  function,  68. 

not  negatived  by  anything  occurring  after  the  date  of  the  inven- 
tion, 69. 

not  negatived  by  description  in  prior  application,  60. 

not  negatived  by  incomplete  prior  description,  57. 

not  negatived  by  prior  abandoned  application,  58. 

not  negatived  by  prior  accidental  and  not  understood  produc- 
tion, 67. 

not  negatived  by  prior  description  of  substantially  different  thing 
or  process,  57. 

not  negatived  by  prior  model,  61. 

not  negatived  by  prior  private  foreign  patent,  55. 

not  negatived  by  prior  English  preliminary  specification,  55. 

not  negatived  by  prior  use  in  foreign  country.  54. 

not  negatived  by  prior  useless  process  or  thing,  65. 

not  negatived  by  substantially  different  prior  process  or  thing,  62. 

not  negatived  by  unpublished  drawings,  61. 

of  designs,  64. 

predicated  of  everything  which  is  absolutely  new,  52. 

predicated  of  some  things  not  absolutely  new,  53. 

want  of,  how  pleaded  in  actions  at  law,  447. 

want  of.  how  pleaded  in  actions  in  equity,  600. 

want  of,  how  proved.  76,  506-508. 

want  of,  how  rebutted,  509,  510. 

OATHS 

affirmations  substituted  for,  124. 

effect  of  waiving,  in  bills,  581. 

to  answers,  581. 

to  bills  in  equity,  584. 

to  pleas  hi  equity.  589. 

to  specifications,  122,  123. 

OBITER  DIOTA 

significance  of,  537. 

OBJECTIONS 

to  evidence,  535. 

to  evidence  before  masters,  741. 

OFFIOEBS  OF  CORPORATIONS 

as  defendants,  410,  411,  418,  415. 

OMISSION 

as  affecting  infringement,  838,  349,  369. 

as  affecting  invention,  85. 

as  affecting  sameness  of  invention,  244. 


736  INDEX. 

ON  SALE 

in  foreign  country  more  than  two  years  before  application,  101. 
in  this  country  more  than  two  years  before  application,  93. 
patent-law  meaning  of  the  phrase,  96. 

OPTIONS 

of  patentee-licensor  to  sue  for  royalty,  or  for  infringement,  309. 

ORAL  DESCRIPTIONS 

whether  fixing  dates  of  subsequently  patented  inventions,  70. 

OWNERS  IN  COMMON 

as  plaintiffs  or  complainants,  399. 
must  join  in  surrender  and  reissue,  252. 

PARKER  &  WHIPPLE  Co.  v.  YALE  CLOCK  Co. 
rule  in,  233. 

PARTITION 

of  patent  rights,  295. 

PARTNERSHIPS 

as  defendants,  408. 
licenses  to,  310. 

PARTS 

of  machines,  how  claimed,  117a.  « 

PATENTABILITY 

prerequisites  of,  1,  2,  3,  23, 

PATENTS 

alleged  abandonment  of,  106,  107. 

beginning  of  terms  of,  170. 

consideration  given  for,  153. 

duration  of,  162-165. 

expiration  of,  before  end  of  apparent  term,  how  pleaded  in  actions 

at  law,  462. 
expiration  of,  before  end  of  apparent  term  how  pleaded  in  actions 

in  equity,  615. 

expiration  of,  before  end  of  apparent  term,  how  proved,  527. 
founded  upon  what,  150. 
granted  for  what  subjects,  1. 
how  construed,  181-189. 
interfering,  315. 
mortgages  of,  288a. 
not  odious  monopolies,  153. 

plurality  of  approximating,  to  one  inventor,  180a. 
plurality  of,  when  suable  on  in  one  action,  417. 
repeal  of,  321. 
territory  covered  by,  160. 
when  dated,  170. 


INDEX.  737 

PATENT  LAWS 

the  sources  of,  537,  634. 

PATENT  RIGHTS 

absolute,  not  qualified,  154. 

dignity  of,  152. 

exclusive  of  government,  157. 

not  subject  to  common  law  execution,  156. 

property,  151. 

relevant  to  specimens  made  or  purchased  before  application  for, 

158. 
subject  to  creditors'  bills,  156. 

PATENT  OFFICE  RULES 

founded  on  what,  109. 

governing  applications,  109. 

relevant  to  applications,  109. 

relevant  to  drawings,  126. 

relevant  to  interferences,  140. 

relevant  to  models,  127. 

relevant  to  specimens  of  compositions  of  matter,  128. 

PENALTIES 

for_disobedience  of  injunctions,  710. 
in  qui  tarn  actions,  329. 

PERPETUATION  OF  TESTIMONY 
bills  for,  585. 

PETITIONS 

for  letters  patent,  110. 

PLAINTIFFS 

costs  recoverable  by,  543. 

in  actions  at  law  for  infringement,  394-400. 

in  qui  tarn  actions,  330. 

PLEAS  IN  ACTIONS  AT  LAW 

bad  in  part,  bad  altogether,  482. 

demurrable,  when,  484. 

dilatory,  439. 

in  bar,  440. 

of  actual  abandonment,  449. 

of  constructive  abandonment,  449. 

of  deceptively  lacking  or  excessive  specification,  468. 

of  defence  in  Miller  t>.^Eagle  Co.,  460. 

of  estoppel,  467. 

of  expiration  of  patent,  462. 

of  indistinct  claims,  455. 

of  insufficient  specification,  454. 


738  INDEX. 

PLEAS  IN  ACTIONS  AT  LAW — Continued 

of  joint  invention  for  sole  patent,  452. 

of  joint  patent  for  sole  invention,  452. 

of  license,  465. 

of  making  or  selling  without  marking  "  patented,"  463. 

of  non-infringement,  466. 

of  release,  465. 

of  repeal  of  patent,  461. 

of  rule  in  Miller  «.  Brass  Co.,  458. 

of  statutes  of  limitation,  471. 

of  surreptitious  or  unjust  obtaining  of  patent,  451. 

of  unreasonable  delay  to  file  needed  disclaimer,  456. 

of  want  of  being  a  statutory  subject  of  a  patent,  446. 

of  want  of  identity  between  application  and  letters  patent,  450. 

of  want  of  identity  between  letters  patent  and  reissue,  459. 

of  want  of  invention,  446. 

of  want  of  novelty,  447. 

of  want  of  reissuability,  457. 

of  want  of  title,  464. 

of  want  of  utility,  448. 

PLEAS  IN  "ACTIONS  IN  EQUITY 
found  bad  in  law,  590. 

found  good  in  law  and  true  in  fact,  590,  649. 
found  good  in  law  and  untrue  in  fact,  590. 
proceedings  on,  590. 
replications  to,  590. 

to  bills  in  the  nature  of  supplemental  bills,  631. 
to  original  bills,  588,  589. 
to  supplemental  bills,  631. 

POLICE  POWERS 

over  specimens  of  patented  things,  155. 
PRACTICE 

in  actions  at  law,  489. 

in  actions  in  equity,  489. 

on  bills  to  repeal  patents,  323. 

on  masters'  findings,  750. 

PRATERS 

for  preliminary  injunctions,  660. 

for  process,  582. 

for  relief,  580. 
PREAMBLE 

of  specifications,  111,  112. 

PRESUMPTIONS 

that  inventors  borrowed  whatever  in  their  inventions  was  old,  43. 
that  letters  patent  are  for  same  inventions,  as  applications,  190. 
that  reissues  are  for  same  inventions  as  originals,  243. 


INDEX.  739 

PRIMARY  INVENTIONS 
defined,  359. 

PRIMARY  PATENTS 

how  infringed,  359,  362. 

PRINCIPLE 

of  invention,  how  explained  in  specification,  115. 

PRINCIPLES 

distinguished  from  processes,  7-15. 
not  patentable,  2,  7. 

PRINTED  PUBLICATIONS 
defined,  56. 

PRIOR  ABANDONED  EXPERIMENTS 
as  affecting  novelty,  63. 

PRIOR  ADJUDICATION 

a  foundation  for  a  preliminary  injunction,  665,  666. 

PRIOR  MAKING 

may  negative  novelty,  72. 

PRIOR  PRINTED  PUBLICATION 
negatives  novelty,  56. 

PRIOR  PRIVATE  FOREIGN  PATENT 
never  negatives  novelty,  55. 

PRIOR  PUBLIC  PATENT 

negatives  novelty,  55. 

PRIOR  PRELIMINARY  ENGLISH  SPECIFICATION 
'  never  negatives  novelty,  55. 

PRIOR  USE 

in  foreign  country  when  negatives  novelty,  54. 
in  thi3  country  negatives  novelty,  71. 

PRIORITY 

question  of,  between  rival  inventors,  how  settled,  140-142,815-820. 

PROCESSES 

claims  for,  how  construed,  186. 

classes  of,  3. 

distinguished  from  principles,  7-15. 

machine,  '•'«/. 

manipulative,  •'<•'. 

mechanical,  '•><>. 

non-mechanical,  3. 

patentability  of,  3. 


740  INDEX. 

PROCESS  PATENTS 

claims  in  specifications  of,  120. 

exclusive  of  those  who  practised  the  process  after  invention  and 

before  application,  159. 
infringed,  how,  335-338. 

PKOFERT 

in  declarations  and  bills  of  complaint,  428,  433,  579. 

PROFITS 

account  of,  covering  what  time.  714. 
accruing  before  surrender  and  reissue,  231. 
decrees  for,  573. 

defendants',  recoverable  in  equity,  711.  ' 
evidence  of,  636,  740. 

from  infringement  by  making  and  selling,  717-723,  735. 
from  infringement  by  selling,  724. 
from  infringement  by  using,  725-734. 
from  infringement  of  design  patents,  723a. 
generic  rule  for  ascertaining,  715. 
interest  on,  736. 

not  measured  by  damages,  716. 
proceedings  for  ascertaining,  739-750, 
recoverable  in  cases  of  joint  infringement,  712. 
recoverable  in  cases  where  infringement  was  partly  unprofitable, 
713. 

PROPORTION 

change  of,  as  affecting  invention,  in  compositions  of  matter,  41a. 
change  of,  as  affecting  infringement  of  patent  for  composition  of 
matter,  373. 

PUBLIC  KNOWLEDGE 

after  invention  and  prior  to  application,  100. 

PUBLIC  USE 

more  than  two  years  before  application,  93. 
patent-law  meaning  of  the  phrase,  94-95. 

PUTNAM,  JUDGE 

discussion  of,  on  lost  arts,  71. 

QUESTIONS  OF  FACT 

abandonment,  108. 

absence  or  presence  of  invention,  42. 

infringement,  339. 

novelty,  75. 

sufficiency  of  specification,  179. 

Supreme  Court,  decisions  on,  635. 


INDEX.  741 


QUESTIONS  OF  LAW 

arising  on  hearings  in  equity,  634. 
arising  on  trials  at  law,  537. 
construction  of  letters  patent.  189. 

Qui  TAM  ACTIONS 

declarations  in,  332, 
form  of,  332. 
functions  of,  324. 
penalties  in,  329. 
plaintiffs  in,  330. 
writs  of  error  in,  334. 
wrongs  remedied  by,  325-327. 

RAILWAY  Co.  v.  SAYLEB 

rule  in,  184,  359-362. 

REARRANGEMENT 

of  parts  as  affecting  infringement,  348. 

RECEIVER 

of  court  invoking  licenses  to  insolvent,  310. 

RECORD 

letters  patent,  matter  of,  191. 

RECORDING 

of  assignments,  281. 
of  grants,  287. 
of  licenses,  304, 

RECOVERY 

of  damages  or  profits  working  license,  314.    . 

REFEREE 

trial  by,  541. 

REFERENCE  NUMERALS  OR  LETTERS 

significance  of,  in  claims,  117ffl,  182a. 

REHEARING 

effect  of,  on -accounting,  648. 

for  matter  apparent  on  the  record,  646. 

on  account  of  newly  discovered  evidence,  647. 

petitions  for,  645. 

REINVENTION 

what  right  conferred  by,  158. 

REISSUES 

applications  for,  214. 
beginning  of  history  of,  210. 


742  INDEX. 

REISSUES — Continued 

broadened,  219,  226,  227. 

claims  of,  disclaimed,  201. 

construed  liberally,  248. 

covered  by  assignment  of  original,  250. 

covering  things  made  before  date  of,  254. 

how  stated  in  declarations,  429. 

invalidity  of,  for  want  of  reissuability  of  original,  how  pleaded  in 

actions  at  law,  457. 
invalidity  of,    for  want  of  reissuability  of  original,  how  pleaded  in 

actions  in  equity,  610. 
invalidity  of,  for   want  of  reissuability  of  original,  how  proved, 

522. 

leaving  claims  unchanged  in  scope,  218a, 
legal  effect  of,  254. 

must  be  for  same  invention  as  original,  233. 
mutual  owners  must  join  in  applications  for,  252. 
narrowed,  216a. 
new  matter  in,  214. 

not  affected  by  more  than  two  years'  prior  public  use  or  sale,  229. 
not  granted  after  expiration  of  original,  232. 
novelty  of,  dating  from  when,  254. 
of  reissues,  232. 

prima  facie  evidence  of  their  own  validity,  492. 
remedies  for  refusal  to  allow,  214. 
rights  of  grantees  under,  253. 
to  assignees,  212,  214,  250,  252. 
to  executors  or  administrators,  250. 
to  one  of  several  executors,  251. 
statutory  foundation  of,  211-215. 
subjects  of,  216. 
substituting  equivalents  in,  247. 
under  the  statue  of  1832,  211. 
under  the  statute  of  1836,  212. 
under  the  statute  of  1837,  213. 
under  the  statute  of  1870,  214. 
under  the  Revised  Statutes.  215. 
under  general  authority  of  the  Commissioner,  210. 
void  in  part  and  valid  in  part,  249. 
when  may  claim  single  device  shown,  but  not  separately  claimed  in 

the  original,  246. 

when  may  claim  sub-combination  shown  in  the  original,  245. 
where  there  is  neither  model  nor  drawing,  214. 

REJOINDERS 

bad  in  part,  bad  altogether,  482. 

function  of,  in  actions  at  law  for  infringement,  478,  480. 


INDEX.  743 

RELEASES 

how  pleaded  in  actions  at  law,  465. 

how  pleaded  in  actions  in  equity,  619. 

how  proved,  531. 

need  not  be  negatived  in  plaintiff's  evidence  in  chief,  490. 

to  one  of  several  joint  inf ringers,  531. 

REMEDIES 

for  infringement  where  treated  in  this  book,  378. 

REPAIRING  PATENTED  MACHINE 
how  far  lawful,  301. 

REPEAL  OF  PATENTS 

for  what  causes  had,  321. 

in  what  courts  obtainable,  322,  323,  654. 

how  pleaded  in  actions  at  law,  461. 

how  pleaded  in  actions  in  equity,  614. 

how  proved,  526. 

practice  in  cases  of  bills  for,  323. 

REPLICATIONS  IN  ACTIONS  AT  LAW 

bad  in  part,  bad  altogether,  482. 
function  of,  in  patent  cases.  478-480. 

REPLICATIONS  IN  ACTIONS  IN  EQUITY 
to  answers,  628. 
to  pleas,  590. 

REPORTS 

exceptions  to  masters',  745-749. 
masters'  draft,  744. 
masters'  final,  750. 

RES  JUDIOATA 

foundation,  limitations,  and  operation  of  the  doctrine  of,  468. 

how  pleaded  in  actions  at  law,  470. 

how  pleaded  in  actions  in  equity,  621. 

how  proved,  533. 

in  interferences.  141,  142. 

RESTRICTIONS 

of  claims  by  Patent  Office,  187«. 

• 
RESULT 

as  affecting  infringement,  340. 

necessary  to  utility,  77. 

RIGHTS 

kinds  of,  in  patented  inreutions,  155. 

of  inventors,  patentees,  etc.,  where  treated  in  this  book,  878. 


744  INDEX. 

RIGHTS  OF  ACTION 

assignment  of,  277. 

assignment  of,  how  protected  from  subsequent  purchasers,  281. 

ROOT  t>.  RAILWAY  Co. 

rule  in,  572,  592,  593. 

ROYALTIES 

as  measures  of  damages,  556-558. 

established  rate  of,  how  affecting  right  to  preliminary  injunctions, 
686. 

for  making,  564. 

for  making  and  using,  no  criterion  of  damages  for  making  and  sell- 
ing, or  vice  versa,  561. 

of  plaintiff,  no  measure  of  recoverable  profits,  716. 

option  of  patentee-licensor  to  sue  for,  or  for  infringement,  309. 

regard  to  proportion,  in  measuring  damages  by,  562. 

reserved  on  sale  of  patents,  no  measure  of  damages,  560. 

SAGE,  JUDGE 

opinion  on  actions  for  assigned  rights  of  action,  395. 

SAME  INVENTION 

meaning  of  the  phrase,  as  between  applications  and  letters  patent 
thereon,  138,  440,  450,  514,  603. 

meaning  of  the  phrase,  as  between  interfering  patents  to  different 
inventors,  315. 

meaning  of  the  phrase,  as  between  a  plurality  of  original  approxi- 
mating patents  to  the  same  inventor,  180a. 

meaning  of  the  phrase,  as  between  an  original  patent  and  a  reissue 
thereof,  233,  242,  243,  244,  440,  459,  524,  612. 

presumption  of,  as  between  applications  and  letters  patent  thereon, 
190. 

presumption  of,  as  between  an  original  patent,  and  a  reissue  thereof, 
243. 

SAWYER,  JUDGE 

opinion  of,  on  witness  fees  as  taxable  costs,  548. 

SECONDARY  INVENTIONS 
defined,  359. 

SECONDARY  PATENTS 

how  infringed,  362. 

SIIEPLEY,  JUDGE 

opinion  of,  on  repeal  of  patents,  322. 

opinion  of,  on  substitution  of  ingredients  in  compositions  of  m&^~ 
ter,  371. 


INDEX.  745 

SHIPMAN,  JTJDGK  NATHANIEL 

opinion  of,  on  decree  where  disclaimer  is  found  necessary,  309. 
opinion  of,  on  invention,  85. 
opinion  of,  on  novelty,  65. 

SHIPMAN,  JUDOB  W.  D. 

opinion  of,  on  indistinctness  of  claims,  177. 

opinion  of,  on  liability  of  officers,  directors,  and  stockholders  of 

corporations  for  corporate  infringement,  410. 
opinion  of,  on  proceedings  before  masters,  741. 

SHIPS 

American,  practice  of  patented  invention  on  board  of,  on  high  seas, 

161. 
foreign,  use  of  patented  invention  on  board  of,  in  United  Stater* 

ports,  161. 

SHIBAS,  JUDGE 

opinion  of,  on  mode  of  operation,  343. 

opinion  of,  on  admissibility  of  depositions  in  interference  suits, 
318. 

SlGXATUKES 

to  drawings,  126. 

to  specifications,  111,  121. 

SlMlLITBR 

function  and  importance  of,  481. 

SKILFUL  MECHANIC 

meaning  of  the  phrase,  57. 

Sous  INVENTION 

distinguished  from  joint  invention,  45,  46. 

for  joint  patent,  51. 

not  inconsistent  with  received  mechanical  assistance,  49. 

not  inconsistent  with  specially  sought  information,  48. 

SPECIAL  PLEADING 

ancient  function  of,  442. 

SPECIFIC  PERFORMANCE 

enforced,  of  contracts  relevant  to  patent  rights,  286. 

SPECIFICATION 

claims,  the  operative  parts  of,  219. 

constituents  of,  111.' 

deceitfully  lacking  or  excessive,  how  pleaded  In  actions  at  law, 

458. 
deceitfully  lacking  or  excessive,  how  pleaded  in  actions  in  equity, 

606.  " 


746  INDEX. 

deceitfully  lacking  or  excessive,  how  proved  to  be,  518. 
insufficient,  how  pleaded  in  actions  at  law,  454. 
insufficient,  how  pleaded  in  actions  in  equity,  607. 
insufficient,  how  proved  to  be,  519. 
meaning  of  the  word,  173,  217. 
oath  to,  122,  123. 

STANDARD  OF  COMPARISON 

under  the  rule  in  Mowry  v.  Whitney,  732-734. 

STATES 

power  of.over  patented  articles,  155. 

STATE  COURTS 

jurisdiction  of,  over  actions  to  enforce  or  set  aside  contracts  rele- 
vant to  patents,  388. 

jurisdiction  of,  over  creditors'  bills  filed  to  collect  debts  out  of 
patent  rights,  289. 

non-jurisdiction  of,  in  infringement  actions,  380. 

STATE  OF  THE  ART 

affecting  questions  of  invention,  43. 
claims  construed  in  the  light  of,  184. 
evidence  of  experts  relevant  to,  500. 
mistake  relevant  to,  how  remedied,  220. 

STATUTES 

special,  grafted  upon  general  statutes,  188. 

STATUTES  OF.LIMITATION 

application  of,  to  actions  in  equity,  622. 

how  pleaded  in  actions  at  law,  471. 

how  pleaded  in  actions  in  equity,  622. 

the  national,  472. 

the  State,  476,  477. 

when  requiring  evidence  to  support  plea  of,  534. 

STOCKHOLDERS  IN  CORPORATIONS 

as  defendants,  410,  411,  412,  415. 

STORY,  JUSTICE 

opinion  of,  on  abandonment  of  patents,  107. 

opinion  of,  on  jurisdiction  of  State  courts,  380. 

opinion  of,  on  liability  of  officers,  directors  and  stockholders  of 

corporations  for  corporate  infringement,  415. 
opinion  of,  on  patent  covering  thing  made  before  application,  158, 

159. 

StJB-CoMBINATIONS 

when  may  be  claimed  in  reissues,  though  not  claimed  in  originals, 
245. 


INDEX.  747 

SUBJECT  OF  PATENT 

want  of  being,  how  pleaded  in  actions  at  law,  446. 
want  of  being,  how  pleaded  in  actions  in  equity,  598. 
want  of  being  how  proved,  504. 

SUBSTANTIAL 

variant  force  of  the  word,  862. 

SUBSTANTIALLY  AS  DESCRIBED 

function  of  the  phrase,  182. 
when  the  phrase  in  implied,  182. 

SUBSTITUTION 

as  affecting  infringement, ',350,  370,  371. 

SUGGESTIONS  TO  INVENTORS 

distinguished  from  joint  invention,  47. 

SUPERSBDBAS 

on  appeal  to  Circuit  Court  of  Appeals,  654. 

SUPPLEMENTAL  BILLS 

leave  of  court  necessary  to  filing,  630. 
subordinate  to  original  bills,  624. 
when  proper,  625. 

SUPPLEMENTAL  BILLS  IN  THE  NATURE  OF  BILLS  OF  REVIEW 
character  and  function  of,  647,  648. 

SUPREME  COURT  OF  THE  UNITED  STATES 

appeals  to,   from  Court  of  Appeals  of  the  District  of  Columbia, 

144,  550.  654. 

appeals  to,  from  Circuit  Courts  of  Appeals,  654. 
certificates  to,  from  Circuit  Courts  of  Appeals.  550,  654. 
certiorari  from,  to  Circuit  Courts  of  Appeals,  550,  654. 

SUPREME  COURT  OF  THE  DISTRICT  OF  COLUMBIA 

appeals  from,  to  Court  of  Appeals  of  the  District  of  Columbia, 

144,  654. 

jurisdiction  of  in  patent  cases,  134,  379. 
writ  of  error  to,  from  Court  of  Appeals  of  the  District  of  Columbia, 

550. 

SUR-RBJOINDERS 

function  of,  in  actions  at  law  for  infringement,  478. 

SURRENDER  OF  INVENTIONS 
how  effected,  105. 

SURRENDER  OF  LETTERS  PATENT 

effect  of,  on  accrued  damages  and  profits,  281. 
mutual  owners  must  join  in,  252. 
when  reissue  is  refused.  231. 
with  a  view  to  reissue,  280  282. 


748  INDEX. 

SUSPENSION 

of  permanent  injunctions  pending  appeals,  703. 

SWAYNE,  JUSTICE 

opinion  of,  on  jont  invention,  46. 

TANET,  CHIEF- JUSTICE 

opinion  of,  on  reissuability  of  patents,  226. 

TAXATION  OF  COSTS 

appeal  from,  549. 

how  and  when  made,  549. 

TEMPORARY  RESTRAINING  ORDERS 

pending  motions  for  preliminary  injunctions.  664. 

TENANCY  IN  COMMON 

in  patent  rights,  292. 

TENANTS  IN  COMMON 
rights  of,  294. 

TENURES 

upon  which  patent  rights  may  be  held,  274. 

TERM  OF  PATENT 

how  fixed,  112. 

TERRITORY 

covered  by  patents,  160. 

TEST  CASES 

pendency  of,  excusing  delay,  684. 

TESTIMONY 

in  actions  at  law,  535. 
in  actions  in  equity,  638. 

TEXT  WRITERS 

weight  of  statements  of,  537. 

THEORY 

invention  which  resides  in,  may  be  patentable,  23. 

TIME 

for  taking  depositions  in  actions  in  equity,  639. 

TITLE 

after  acquired,  282. 
by  assignment,  274 
by  bankruptcy,  290, 
by  creditor's  bill,  289. 
by  death,  291. 
by  grant,  287. 


INDEX.  749 

TITLE — Continued 

by  occupancy,  273. 

certainty  of,  necessary  to  preliminary  injunction,  605,  675. 

conveyance  of  legal,  conveying  equitable,  286. 

conveyed  by  estoppel,  275. 

equitable,  how  arising,  274,  285. 

how  stated  in  declarations,  432. 

how  proved,  495. 

in  a  plurality  of  persons,  292. 

inchoate,  273. 

methods  of  acquisition  of,  272. 

to  reissues,  250. 

to  reissues  when  granted  to  executors  or  administrators,  251. 

variant  nature  of,  272. 

want  of,  how  pleaded  in  actions  at  law,  464. 

want  of,  how  pleaded  in  actions  in  equity,  617. 

want  of,  how  proved,  529. 

warranty  of,  282. 

TRESPASS  ON  THE  CASE 

actions  of,  for  infringements  of  patents,  418.  421. 
character  of  actions  of,  442. 
declarations  in  actions  of,  422-438. 

TRIALS 

by  judges  without  juries,  540. 

by  juries,  488. 

by  juries  in  equity  cases,  64'2. 

by  juries,  of  issues  sent  out  of  equity,  595. 

by  referees,  541. 

of  actions  at  law,  487. 

TRUSTEE 

infringer  treated  as.  in  respect  of  his  profits,  715. 

THUSTS 

constructive,  285. 
resulting,  285. 

Two  YEARS 

sale,  or  public  use  more  than,  before  application,  »8,  94.95,  96,  289. 

UNANIMITY  OF  JURIES 
history  of,  488. 

UNAUTHORIZED  MARKING 
how  punished,  325. 
how  restrained,  333. 

USEFUL  ART 

subject  of  a  patent,  1 . 


750  INDEX. 

USES 

all,  of  patented  thing,  covered  by  the  patent,  180. 

UTILITY 

burden  of  proof  in  respect  of,  85. 

constituent  elements  of,  77 . 

doubts  relevant  to,  85. 

in  respect  of  infringement,  376. 

may  reside  in  beauty,  80. 

must  be  stated  in  declarations,  424. 

necessary  to  patentability,  77. 

necessary  to  whatever  is  claimed  to  negative  novelty,  65. 

negatived  where  function  is  always  evil,  81. 

not  negatived  by  mere  imperfection,  79. 

patents  prima  facie  evidence  of,  85. 

performance  of  specified  function  necessary  to,  78. 

want  of,  how  pleaded  in  actions  at  law,  448 

want  of,  how  pleaded  in  actions  in  equity,  601. 

want  of,  how  proved,  511.       v 

when  functions  are  thought  by  some  to  be  good,  and  by  others  to 

be  evil,  83. 

where  functions  sometimes  work  good,  and  sometimes  work  evil,  82. 
where  primary  function  is  good,  and  ultimate  function  is  evil,  84. 

VALIDITY 

defendant's  admission  of,  when  foundation  of  right  to  preliminary 

injunction,  673. 

letters  patent,  prima  feme  evidence  of  their  own,  491. 
reissues  prima  facie  evidence  of  their  own,  492. 
special  presumption  of,  necessary  to  preliminary  injunction.  665. 
warranty  of,  283,  284. 

VENUE 

how  laid  in  declarations,  422. 

VERDICTS 

in  patent  cases,  538. 

WALLACE,  JUDGE 

opinion  of,  on  abandonment  of  patents,  107. 

opinion  of,  on  decree  where  disclaimer  is  found  necessary,  209. 

WARRANTY 

of  title,  282. 

of  validity,  283,  284,  307. 

WASHINGTON,  JUSTICE 

opinion  of,  on  abandonment  of  patents,  106. 
opinion  of,  on  jurisdiction  of  State  courts,  380. 


INDEX.  751 

WHEELER.  JUDGE 

opinion  of,  on  actions  of  assumpsit  for  infringements  of  patents 

419. 

opinion  of,  on  decree  where  disclaimer  is  found  necessary,  209. 
opinion  of,  on  McClurg  «.  Kingsland,  159. 
opinion  of,  on  public  use,  95. 

WITNESSES 

to  specifications,  121. 

to  want  of  novelty,  need  not  be  named  as  such,  in  notices  of  special 
matter,  444. 

WOODRUFF,  JUDGE 

opinion  of,  on  mode  of  operation,  345. 

opinion  of,  on  witness  fees  taxable  as  costs,  548. 

WORKMANSHIP 

distinguishable  from  invention,  27. 

WRITS  OF  ERROR 

function  of,  550. 

in  gut  tarn  actions,  334. 

where  cases  are  tried  by  judges  without  juries,  540. 

WRONGS 

classification  of,  411. 

of  infringement,  where  treated  in  this  book,  378. 


201   ^ 


